When the case of Microsoft Corp. v. Motorola Inc. article went to appeal, Motorola initially argued that the U.S. Court of Appeals for the Federal Circuit should hear the case, not the U.S. Court of Appeals for the Ninth Circuit. It’s well established that the Federal Circuit has jurisdiction over cases “arising under” federal patent law — that is, lawsuits where federal patent law creates the cause of action or patent law is a necessary element of one of the claims.
But, as the Ninth Circuit observed, it had already exercised jurisdiction over the case for Motorola’s earlier appeal of an injunction that Microsoft had sought to prevent Motorola from enforcing any injunction it might obtain against Microsoft’s use of certain contested patents. As the court explained in that earlier ruling, not all cases involving a patent claim fall within the Federal Circuit’s jurisdiction.
This case, the Ninth Circuit said, didn’t arise under patent law but rather was a breach of contract action. Moreover, the Federal Circuit clearly had no problem with the Ninth Circuit’s jurisdiction, considering it had transferred the appeal to the Ninth Circuit.