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Howard Cooper, Joseph Cacace obtain precedential ruling defining limits of appellate review of remand order related to patent counterclaims

Howard M. Cooper and Joseph M. Cacace persuaded the U.S. Court of Appeals for the Federal Circuit to reject the argument of defendants that the America Invents Act overrides a bar to appellate review of a remand order to state court.

The Federal Circuit ruled that the defendants' patent counterclaims – previously remandedby the U.S. District Court in Massachusetts as not presenting a live case or controversy within the federal court’s jurisdiction – alone were insufficient to create an exception allowing it to consider the lower court's decision to send the case back to state court. 

The case involves various state law claims alleging theft of trade secrets and proprietary information, breach of fiduciary duties, and breach of several contracts.  The defendants had asserted patent counterclaims seeking a declaration of patent non-infringement, but the lower court held that the counterclaims failed to present a justiciable case or controversy under Article III of the U.S. Constitution and remanded the case to state court.

"Though hearing the state-law and patent-law claims together may promote important interests such as efficiency and avoiding inconsistent judgements," the Federal Circuit wrote, "we are not persuaded that the [American Invents Act] commands us to favor those interests over … the presumption of remand non-reviewability."

Mr. Cacace, who argued the appeal, added: “The Federal Circuit made it clear that the America Invents Act is not a one-way ticket to federal court for defendants who assert patent infringement counterclaims in an attempt to create federal jurisdiction where there is none.  The court’s straightforward application of the statutory bar to appellate review of remand orders based on lack of subject matter jurisdiction rejects the notion that the AIA somehow creates an exception to that longstanding bar to appellate review.  The court's ruling will help to curtail lengthy litigation over jurisdictional issues in cases where patent counterclaims that form the basis for removal fail to present a justiciable Article III case or controversy.