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South Texas College of Law Houston
Shurn, Peter J.

I. Who’s Law To Apply? The relevant test is whether the issue concerns a “subject which is not unique to patent law,” or which is “not specific to our statutory jurisdiction” in which we have deferred to regional circuit law.
A. Procedural Issues: When the precise issue involves an interpretation of the Federal Rules of Civil Procedure or the local rules of the district court.
1. Test
i. Whether procedural issues may be “related” to “substantive matters unique to the Federal Circuit” and thus committed to Fed. Circuit law.
a. Preliminary Injunction- not limited to patent law, but involves substantive matters unique to Fed Circuit, therefore, applied procedural issues of Fed Circuit.
ii. Whether “most cases involving the issue will come on appeal to this court,” thereby putting Fed Cir. in a “good position to create a uniform body of federal law” on the issue.
iii. Finally, Fed. Cir. conforms their law to that of the regional circuits, without regard to the exclusivity of jurisdiction, when there exists an expressed uniformity among the circuits.
2. General Rule
i. If not “unique to,” “related to,” or “pertaining to” patent issues, the regional circuit law should apply.
a. Each case must be decided by reference to the core policy of not creating unnecessary conflicts and confusion in procedural matters.
b. Examples of Regional Court Law
1. Attorney Disqualification
2. Determining the Amount of Contempt Damages
3. Standard of Appellate Review on denial of JNOV
4. Whether “prevailing party” and thus entitled to costs
5. Disqualification of Attorney for Conflicts
6. Awarding Sanctions for Discovery Abuses
c. Examples of When to Apply State Law
1. Personal Jurisdiction
2. Construction of Assignment Agreement unless would be inconsistent w/ aims of federal patent policy. Note: court followed federal law in declining to permit the assignment of non-exclusive licenses, which contradicted state law.
3. Shop Rights
d. If there is no regional circuit precedent on a procedural issue, the Federal Circuit needs to predict how that regional circuit would have decided the issue in light of the decisions of that circuit’s various district courts, public policy, etc.
ii. If “unique to,” “related to,” or “pertaining to” patent issues, then apply Federal Circuit.
a. Examples
1. Filing a Post-Verdict Motion to Review Sufficiency of the Evidence: In Biodex, the court concluded deference to regional circuit inappropriate because of the longstanding policies of promoting uniformity and minimizing confusion and recognizing the essential relationship of the issue (thus related to) before us to the exercise of Federal Circuit authority.
2. Grant of a Preliminary Injunction against Patent Infringement
3. Subject Matter Jurisdiction
B. Substantive Issues in Patent Law: apply the Federal Circuit law.
1. Examples:
i. Antitrust Issues pertaining to whether a patent infringement suit is based on a fraudulently procu

her party seeking enforcement of the patent can sue, if at all, only w/ the patentee or in the name of the patentee. “Any rights of the licensee must be enforced through or in the name of the patent owner,” and “never in the name of the licensee alone, unless that is necessary to prevent an absolute failure of justice.”
a. A licensee must have “standing” under the patent statute.
1. Key question- whether the licensee as a matter of law has an exclusive property interest in the patent.
2. To have co-plaintiff standing, a licensee must hold some of the proprietary sticks from the bundle of patent rights, albeit a lesser share than an assignment with standing to sue alone.
i. Co-plaintiff Standing- licensee has a right to bring suit on the patent in the name of the licensor, whether or not the license so provides and regardless of patentee’s cooperation.
a. Express Covenants: cast on the licensee the affirmative duty to initiate and bear the expense of the litigation.
b. Implied Covenant: the implied obligation of the licensor to allow the use of his name is indispensable to the enjoyment by the licensee of the monopoly which by personal contract the licensor has given.