In a nonprecedential decision addressing the jurisdiction of the U.S. Court of Appeals for the Federal Circuit under 28 U.S.C. § 1295(a) to review questions of patent law under 28 U.S.C. § 1338, the Federal Circuit held that the mere appearance of the Bayh-Dole Act in Title 35 of the United States Code does not make it a statute under the patent law. Wisconsin Alumni Research Foundation v. Xenon Pharmaceuticals, Inc., Case Nos. 07-1026, -1033 (Fed. Cir., Oct. 24, 2007) (per curiam).
The appeal to Federal Circuit related to a patent licensing dispute between the Wisconsin Alumni Research Foundation (WARF) and Xenon, which was a licensee of WARF-owned patents. (WARFis the patent and licensing arm of the University of Wisconsin.) The licensed technology involved a compound relating to the control of cholesterol, obesity and diabetes. In its complaint, WARFasserted that Xenon breached its license agreement by not paying WARFits due license fees.
In 2006, a jury awarded WARF $1 million for its breach-of-contract case against Xenon. WARF’s original complaint had raised breach-of-contract issues under state law but also included technology-transfer issues under the Bayh-Dole Act. (35 U.S.C. §§ 200, et seq.), which concerns federal government funding agreements. Xenon appealed to the Federal Circuit, asserting the recitation of the Bayh-Dole Act technology-transfer issues in the complaint established Federal Circuit jurisdiction.
In stating that the Court lacked subject matter jurisdiction over the case, the Federal Circuit concluded that just because the Bayh-Dole Act is included in 35 U.S.C. does not mean this is a case arising under the patent laws. Only those contract or license disputes that require determination of an issue such as patent infringement or validity can give rise to Federal Circuit jurisdiction.
"[M]ere inclusion in Title 35 of the United States Code does not make a statute a patent law under which a claim may arise. At its heart, the Bayh-Dole Act concerns government funding agreements—contracts in the language of 35 U.S.C. § 201—an area that is outside our § 1295(a) jurisdiction."
The court noted that just as 35 U.S.C. may include non-patent laws, other sections of the U.S. Code (other than Title 35) may include patent laws. The case was transferred to the Court of Appeals to the Seventh Circuit.
Practice Note:
The mere citation of Bayh-Dole in a pleading for a breach of contract case for unpaid royalties is insufficient to establish jurisdiction before the Federal Circuit. The award of costs to WARF in this appeal is a clear indicator that counsel should carefully review jurisdictional issues prior to filing an appeal to the Federal Circuit.The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.