February 9, 2018

Walker Process Monopolization Claim Does not Depend upon Resolution of a Substantial Question of Federal Patent Law

By Bryan K. Wheelock, Principal

In Xitronix Corp. v. Kla-Tencor Corp., [2016-2746] (February 9, 2018), the Federal Circuit transferred an appeal of a Walker Process claim to the United States Court of Appeals for the Fifth Circuit, which has appellate jurisdiction over cases from the District Court for the Western District of Texas.

Xitronix raised a Walker Process monopolization claim under § 2 of the Sherman Act and §§ 4 and 6 of the Clayton Act based on the alleged fraudulent prosecution of a patent.

Xitronix asserted that the Federal Circuit had jurisdiction over the appeal pursuant to 28 U.S.C. § 1295(a)(1), and KLA-Tencor did not dispute this assertion, although the Federal Circuit did.  The Federal Circuit said the question is whether the monopolization allegation necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.

Applying the well-pleaded complaint rule, in light of the Supreme Court’s guidance and rationale in Gunn, the Federal Circuit held that monopolization does not depend upon resolution of a substantial question of federal patent law.

The Federal Circuit said that there is nothing unique to patent law about allegations of false statements.  While a determination of the alleged misrepresentations to the PTO will almost certainly require some application of patent law, consistency with the federal question jurisdiction statute requires more than mere resolution of a patent issue in a “case within a case.”  They went on to say, “Something more is required to raise a substantial issue of patent law sufficient to invoke our jurisdiction under 28 U.S.C. § 1295(a)(1).”

The underlying patent issue in this case, while important to the parties and necessary for resolution of the claims, does not present a substantial issue of patent law.  The Federal Circuit noted that patent claims will not be invalidated or revived based on the result of this case.

Because Federal Circuit law applies to substantive questions involving its exclusive jurisdiction, the fact that at least some Walker Process claims may be appealed to the regional circuits will not undermine its uniform body of patent law.

The Federal Circuit noted that the fact that its law applies to Walker Process claims does not mean that it has exclusive jurisdiction over appeals of such claims.