[EL] FW: On Congress and federal court jurisdiction: fixing a Scalia decision

[Mozaffar, Shaheen]

The two messages below from Professor Arthur Hellman and Professor Stephen Wasby were posted on the American Political Science Associations' Legislative Studies Section listserve.  They concern the patent bill President Obama signed into law on Friday.  The bill includes Professor Hellman's proposal for overruling Supreme Court decision on federal jurisdiction.  As Professor Wasby says, it is not often that many us get our ideas enacted into law.  While the substantive issue is not related to election law, it offers an interesting insight into the relationship between law, politics, and policy that might of interest to list members.

Professor Wasby and Professor Hellman have given permission for posting the messages.  List members may contact Professor Hellman (hellman at pitt.edu<mailto:hellman at pitt.edu>) for further inquiries.

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Shaheen Mozaffar, Ph.D.
Professor
Department of Political Science
180 Summer Street
Bridgewater State University
Bridgewater, MA 02325
USA

+1-508-531-2291 (me)
+1-508-531-1387 (dept)
+1-508-531-6186 (fax)

smozaffar at bridgew.edu<mailto:smozaffar at bridgew.edu>
www.bridgew.edu<http://www.bridgew.edu/>
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----- Original Message -----
From: Stephen L. Wasby<mailto:wasb at albany.edu><mailto:wasb at albany.edu>
Sent: Monday, September 19, 2011 12:27 PM
Subject: on Congress and federal court jurisdiction: fixing a Scalia
decision

I am posting the message below at the request of Prof. Arthur Hellman of the
University of Pittsburgh School of Law. Declaration and disclaimer: Arthur
and I both write about the Ninth Circuit -- shame on us! -- but now for
something completely different.

First, a plug. (If I plug someone else's work, it isn't shameless.) If you
follow the link to the 2006 House Report (at the end of Prof. Hellman's
message), you will discover (on page 6) that the "Holmes Group fix" that the
President signed into law Friday adopts the approach proposed by Prof.
Hellman himself. Or, to quote from the press release issued by Prof.
Hellman's law school: "Congress has passed and sent to the President a bill
that adopts Professor Arthur Hellman's suggested approach for overruling a
Supreme Court decision on federal jurisdiction. President Obama will sign
the bill on Friday, and Professor Hellman's proposals will be enacted into
law as part of the Judicial Code (Title 28)."

In addition to the reasons why this should be of interest to law courts folk,
as indicated in the first paragraph of Prof. Hellman's message, there is
also something of interest here for legislative scholars, because Prof.
Hellman says he "had given the bill up for dead after the 109th Congress,"
but, lo and behold, here it is enacted into law. He says he is still
pinching himself. Tain't many of us who get our ideas enacted into law.

I have copied Prof. Hellman on this message, and I know that he'll be happy
to respond to any questions.

     Steve Wasby (Stephen L. Wasby, professor emeritus, University at
Albany); Eastham, Mass.

= = =

Here is Prof. Hellman's message:
Buried in the patent bill that President Obama signed into law Friday (Pub.
L. No. 112-29, the "America Invents Act") is a set of amendments that may be
of interest from a Law & Courts perspective for several reasons, perhaps
most importantly because the amendments illustrate congressional overruling
of a Supreme Court decision, but also because this episode speaks to the
question of specialization in the courts, about which Larry Baum has written
so cogently. The amendments effectively overrule a 2002 Supreme Court
decision (authored by Justice Scalia) that is a paradigm of the text-based
approach to statutory interpretation, and they also demonstrate Congress's
commitment to preserving a system of specialized appellate review it
previously enacted.


What follows is technical but such is the law of federal jurisdiction. (SLW:
Attendez-vous!)


The amendments are known as the "Holmes Group fix" because they address
issues raised by the Supreme Court's decision in Holmes Group, Inc. v.
Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002).
In Holmes Group, the Court held that the appellate jurisdiction of the Court
of Appeals for the Federal Circuit does not encompass cases in which claims
under the patent laws are raised in a responsive pleading (e.g., as a
counterclaim) rather than in the plaintiff's complaint.  The Court reached
this result through interpretation of the two governing sections of the
Judicial Code.  Section 1295(a)(1) provided that the Federal Circuit shall
have exclusive jurisdiction over appeals from the district courts "if the
jurisdiction of [the district court] was based, in whole or in part, on
section 1338 of this title."  Section 1338(a), in turn, vests original
jurisdiction in the district courts "of any civil action arising under any
Act of Congress relating to patents . . ."


The Court held that § 1338(a) must be interpreted in accordance with the
"well-pleaded complaint" rule long established for § 1331 general
federal-question jurisdiction cases-and under that rule, a counterclaim does
not support "arising under" jurisdiction.  The Court's result was criticized
for contravening Congress's intent to create a uniform body of patent law by
having all patent appeals heard by the Federal Circuit. In fact, the Court
more or less acknowledged this, saying  that "Our task here is not to
determine what would further Congress's goal of ensuring patent-law
uniformity." And because the exclusive jurisdiction of federal courts in
patent and copyright cases is tied to original jurisdiction, the decision
also had the effect of allowing state courts to hear counterclaims under the
patent and copyright laws.


The "Holmes Group fix" (contained in § 19 of Pub. L. No. 112-29) addresses
these concerns by amending two existing sections of the Judicial Code and
adding one new section. The amendments have only prospective application,
that is, they are to be applied only in civil actions commenced on or after
the date of their enactment.


First, the new law overrules the specific holding of Holmes Group by
defining the appellate jurisdiction of the Federal Circuit to include an
appeal from a final decision of a district court "in any civil action
arising under, or in any civil action in which a party has asserted a
compulsory counterclaim under, any Act of Congress relating to patents or
plant variety protection."


Second, the second sentence of § 1338(a) is deleted and replaced with:  "No
State court shall have jurisdiction over any claim for relief arising from
any Act of Congress relating to patents, plant variety protection, or
copyrights," with "State" defined broadly to include the District of
Columbia, Puerto Rico, and territories.


Finally, the act adds a new section (28 U.S.C. § 1454) authorizing removal
of "[a] civil action in which any party asserts a claim for relief arising
under any Act of Congress relating to patents, plant variety protection, or
copyrights."


The Public Law is not yet on line, but the new statutory language can be
found at pp. 48-49 of the enrolled bill:
http://www.gpo.gov/fdsys/pkg/BILLS-112hr1249enr/pdf/BILLS-112hr1249enr.pdf
The authoritative legislative history of the "America Invents Act" is the
House Report on H.R. 1249, the bill that became Pub. L. No. 112-29.  That
report has little to say about the Holmes Group fix.  It notes:  "The Act
clarifies the jurisdiction of the US District Courts and stipulates that the
US Court of Appeals for the Federal Circuit has jurisdiction over appeals
involving compulsory patent counterclaims.  The legislative history of this
provision, which we reaffirm and adopt as our own, appears in the Committee
Report accompanying H.R. 2955 from the 109th Congress" in 2006.  That
Committee Report, No. 109-407, can be found at this link:
http://www.gpo.gov/fdsys/pkg/CRPT-109hrpt407/pdf/CRPT-109hrpt407.pdf
The version of the "fix" that has now become law differs in a few respects,
not worth detailing here, from the version reported by the House Judiciary
Committee in 2006.l