109 Iowa L. Rev. 791 (2024)



The Federal Circuit is unique among the courts of appeals in that it routinely applies the precedent of other circuits as binding law. Specifically, the Federal Circuit applies its own prior decisions to issues that are “unique to” or “pertain to” patent law. But, for nonpatent issues, the Federal Circuit applies the precedent of the numbered, regional circuit in which the district court is located. Issues governed by regional circuit law in patent cases include matters of civil procedure, attorney-client privilege, substantive claims under copyright law, trademark law, antitrust law, and more.

Numerous scholars have criticized the Federal Circuit’s choice-of-law regime because it makes the law unstable and results hard to predict, undermining the legal uniformity Congress created the Federal Circuit to provide. Yet proposals to change the Federal Circuit’s choice-of-law rules have been around for decades and the circuit has shown little interest in reform. Indeed, there are good (though not bulletproof) reasons for the Federal Circuit to look to regional circuit law on issues that arise in patent and nonpatent cases alike, rather than developing a distinct body of law that district courts must apply in patent cases—or to patent claims—only.

Given that regional circuit law is here to stay at the Federal Circuit, this Article proposes a novel, procedural solution to the problems that arise when regional circuit law provides no clear answer to a question on which it governs: the Federal Circuit should certify that question to the regional circuit. Certification would promote accuracy and predictability because the Federal Circuit would not need to guess about regional circuit law, as it does now. Similarly, because the Federal Circuit doesn’t have jurisdiction over every patent-related case filed in federal court, we might also allow the regional circuits to certify unsettled questions of patent law to the Federal Circuit.

Importantly, an intercircuit certification procedure would be easy to implement: no legislation would be required. The Federal Circuit and the regional circuits could simply adopt local rules allowing certified questions, similar to the rules that currently allow federal courts to certify questions of state law to state supreme courts. And though Article III’s case-or-controversy requirement and the Federal Circuit’s exclusive statutory jurisdiction might present obstacles to intercircuit certification, those obstacles can likely be surmounted so long as the underlying dispute remains live and the Federal Circuit sends only discrete questions of nonpatent law to the regional circuits.

Monday, January 15, 2024