from the United States District Court for the Western
District of Texas in No. 1:14-cv-01113-SS, Judge Sam Sparks.
PETITION FOR PANEL REHEARING AND REHEARING EN BANC
Michael S. Truesdale, Law Office of Michael S. Truesdale,
PLLC, Austin, TX, filed a response to the petition for
Gabriel Fountain, DLA Piper U.S. LLP, Austin, TX, filed a
petition for panel rehearing and rehearing en banc for
defendant-appellee. Also represented by Brian K. Erickson,
Prost, Chief Judge, Newman, Mayer  , Lourie, Dyk, Moore,
O'Malley, Reyna, Wallach, Taranto, Chen, Hughes, and
Stoll, Circuit Judges.
Lourie, Circuit Judge, dissents from the denial of the
petition for rehearing en banc without opinion.
KLA-Tencor Corporation filed a petition for panel rehearing
and rehearing en banc. A response to the petition was invited
by the court and filed by appellant Xitronix Corporation. The
petition for rehearing and response were first referred to
the panel that heard the appeal, and thereafter, to the
circuit judges who are in regular active service. A poll was
requested, taken, and failed.
consideration thereof, It Is Ordered That:
petition for panel rehearing is denied.
petition for rehearing en banc is denied.
mandate of the court will issue on June 22, 2018.
Newman, Circuit Judge, dissenting from denial of the petition
for rehearing en banc.
because of the importance of this decision to the judicial
structure of patent adjudication, and the future of a
nationally consistent United States patent law.
case, the complaint states that the asserted violation of
patent law may support violation of antitrust law-a
Walker Process pleading based on charges of fraud or
inequitable conduct in prosecution of the patent appli-
cation in the Patent and Trademark Office. The three-judge
panel assigned to this appeal held that the Federal Circuit
does not have jurisdiction, did not reach the merits, and
transferred the appeal to the Fifth Circuit.This
jurisdictional ruling is contrary to the statute governing
the Federal Circuit, and contrary to decades of precedent and
experience. Nonetheless, the en banc court now declines to
review this panel ruling.
in concern for the conflicts and uncertainties created by
this unprecedented change in jurisdiction of the Federal
Circuit and of the regional courts of appeal. With the
panel's unsupported ruling that the Supreme Court now
places patent appeals within the exclusive jurisdiction of
the regional circuits when the pleading alleges that the
patent issue may lead to a non-patent law violation, we
should consider this change en banc.
District Court's Decision was Limited to Patent
district court received a complaint for "Walker
Process antitrust claims based on KLA's alleged
fraudulent procurement of a patent." Dist. Ct. Dec. at
*1. Xitronix alleged that the "entire prosecution"
of the patent was tainted by fraud or inequitable conduct in
the Patent and Trademark Office. J.A. 54 (¶111); J.A. 63
panel now rules that the appealed issues of fraud and
inequitable conduct in obtaining the patent do "not
present a substantial issue of patent law, " Transfer
Order, 882 F.3d at 1078, and therefore that the jurisdiction
of the Federal Circuit, 28 U.S.C. § 1295(a)(1), does not
apply to this appeal. The panel states: "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, " and that
"[s]omething more is required to raise a substantial
issue of patent law sufficient to invoke our
jurisdiction." Transfer Order, 882 F.3d at 1078. We are
not told what that "[s]omething more" might be.
party had questioned our appellate jurisdiction. The panel
raised the question sua sponte, and now holds that a Supreme
Court decision on state court malpractice jurisdiction,
Gunn v. Minton, 568 U.S. 251 (2013), removed Federal
Circuit jurisdiction of Walker Process patent
issues of inequitable conduct or fraud in procuring the
patent are no longer deemed to be a substantial issue of
patent law, the court should speak en banc. Here, the
district court reviewed the patent prosecution, including the
references and other information relevant to examination for
patentability; reviewed the applicant's arguments, the
examiner's responses, and the examiner's reasoning in
allowing the claims; and reviewed information from the
concurrent infringement litigation. Dist. Ct. Dec. at *5-8.
The district court wrote a detailed opinion, concluding that
fraud or inequitable conduct in patent prosecution had not
been shown. Id. at *9. This is the ...