Um, Where Do I Go From Here?


Sometimes people get confused about which federal court is supposed to hear their appeal following the trial court or jury’s decision in an intellectual property case. If it’s a patent case, the answer is easy. The Federal Circuit hears the appeals in all patent cases.

Well, what if it involves trademark or copyright issues? If a patent is also involved, it still goes to the Federal Circuit. If not, then it should be appealed to the same federal appellate court that generally hears cases appealed from the district court where the suit was filed.

This confusion surfaced in a recent order that denied a motion to transfer an appeal to the Eleventh Circuit. Schmidt v. Versacomp, Inc., Nos. 2011-1295, -1341 (Fed. Cir. Sept. 1, 2011) (nonprecedential order). This appeal involves a claim for breach of a settlement agreement that disposed of a prior patent infringement case and a new trademark infringement claim. The Federal Circuit decided that this case belongs on its docket because the breach claim arises under patent laws, which means it has the power to take (and decide) this case.

We Want Documents!

What can you do when you feel like the trial judge isn’t giving you enough leeway to get the discovery you feel you are entitled to before trial? Well, if the problem is really bad, you can ask the appellate court to step in immediately and fix it., but you better have a compelling reason why the issue can’t wait until after the trial is completed and the whole case can be appealed.

Evidently, National Oilwell Varco, L.P. thought it was not getting “basic discovery” from Hydril Co., L.P. at the trial level and wanted the Federal Circuit to step in and help it out. Noting that these types of requests (called petitions for a writ of mandamus) should only be granted in extraordinary circumstances, the court declined National Oilwell Varco’s request that it weigh in on the discovery disputes brewing at the trial level. In re National Oilwell Varco, L.P., No. 2011-m994 (Fed. Cir. Sept. 2, 2011) (nonprecedential order).

I have to say, this petition raises issues that are uncommon in Texas courts. One regular complaint from parties that end up in federal court in Texas is that it allows “wild-west discovery,” with few meaningful limitations on document production, witness depositions, and other expensive and burdensome investigations that precede trial.

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