Adrift on a Sea of Uncertainty: Preserving Uniformity in Patent Law Post-Vornado Through Deference to the Federal Circuit

87 Pages Posted: 13 Aug 2003


Congress created the United States Court of Appeals for the Federal Circuit in 1982, and granted that court exclusive appellate jurisdiction over civil actions arising under patent law. Congress's primary goals in creating the Federal Circuit were to produce a more uniform patent jurisprudence and to reduce forum shopping based on favorable patent law.

But in the 2002 decision of Holmes Group, Inc. v. Vornado Air Circulation Systems, the Supreme Court held that patent counterclaims alone could not create Federal Circuit jurisdiction. This decision not only overruled the Federal Circuit's longstanding jurisdictional rule, but also opened the door for Regional Circuit Courts of Appeals (RCCOAs) to decide appeals where patent claims appear only as counterclaims. Because RCCOAs generally do not defer to the decisions of coordinate federal courts (what can be termed the rule of no deference), RCCOAs will be able to independently develop patent caselaw - threatening the goals for which the Federal Circuit was created.

To date, the scholarly response to Vornado's problems has focused on approaches expanding the Federal Circuit's jurisdiction. Commentators addressing deference to the Federal Circuit's patent precedents have either assumed that deference is impossible or impractical, or have mentioned deference as an option only in passing. No one yet has analyzed in detail the case for deference to the Federal Circuit.

This article provides that analysis. It explains why the traditional justifications for the rule of no deference are inapplicable here, why deference to the Federal Circuit serves Congressional intent, and why the reasons for such deference compare favorably to established exceptions to the rule of no deference. The article also suggests a particular scope and level of deference, and explains deference's superiority as a long-term solution over jurisdictional modifications. The article should be particularly useful to practitioners and judges faced with these issues in the short-term, and should facilitate inquiry by legislators and academics into a long-term resolution.

Keywords: patent, Holmes, Vornado, deference, counterclaim, choice of law, Federal Circuit, jurisdiction

JEL Classification: K29, K39, K40, K41, O34, O38

Suggested Citation

Thompson, Larry D., Adrift on a Sea of Uncertainty: Preserving Uniformity in Patent Law Post-Vornado Through Deference to the Federal Circuit. Available at SSRN: or

Larry D. Thompson (Contact Author)

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