Congress and President Obama Adopt Arthur Hellman’s Suggestions for Overruling Supreme Court Decision

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).

The bill is H.R. 1249, the “America Invents Act.” One section of the bill incorporates provisions known as the “Holmes Group fix” because they overrule the Supreme Court’s 2002 decision in Holmes Group, Inc. v. Vornado.

The Holmes Group decision involved the appellate jurisdiction of the Court of Appeals for the Federal Circuit. The Supreme Court held that the Federal Circuit cannot review a case in which the complaint does not allege a patent law claim, although the answer contains a patent-law counterclaim. The decision 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.

The “Holmes Group fix” originated in a hearing of the House Judiciary Committee in March 2005. A bar association proposed overruling Holmes Group by revising the provision of the Judicial Code defining the “original jurisdiction” of the district courts in patent cases.  Professor Hellman agreed that Holmes Group should be overruled, but he cautioned the committee that the association proposal could have unanticipated consequences.  He suggested a more narrowly tailored package of amendments.

The Judiciary Committee agreed with Professor Hellman and unanimously endorsed a bill embodying his proposals. Although that bill did not reach the House floor, the principal elements of the “Holmes Group fix” were incorporated into the “America Invents Act.” They will become law when President Obama signs the bill on Friday.

The “Holmes Group fix” amends two sections of the Judicial Code dealing with intellectual property cases and adds a new provision allowing removal of certain IP cases from state to federal court.

A detailed account of the legislative history of the “Holmes Group fix,” including Professor Hellman’s role, can be found in the House Report on the 2006 bill here.  

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