The Western District of Washington sits within the 9th Circuit Court of Appeals (which, as noted below, has already heard an interlocutory appeal in this case). But as you may know, in order to preserve uniformity in patent law, the U.S. Court of Appeals for Federal Circuit in Washington, DC is the court designated by Congress as the appeals court with exclusive jurisdiction for nearly all patent cases. The Microsoft-Motorola case (at least the part which has garnered the most attention) involves a breach of contract issue relating to patents, standard-setting, and patent licensing issues. So, which is it — the 9th Circuit or the Fed Circuit?

Brace yourselves – this will take a couple thousand words.

What Microsoft has done is get a friendly local judge to declare a worldwide price for Motorola's Rand patents, even though other locales use very different methods for determining a price, under the concept that although these are patents, a Rand agreement turns any dispute into a contract dispute. However, as Matt points out, there were originally patent claims brought by Motorola, and this very judge consolidated them into this case and then threw them out, so logically, any appeal now should go to the Federal Circuit:

The consolidation of Microsoft’s RAND claims and Motorola’s infringement claims means that since June 1, 2011, W.D. Wash. case no. C10-1823 has included not just declaratory judgment claims and claims for breach of contract, but also claims relating to the infringement and invalidity of several patents. Judge Robart’s decision to consolidate the two cases turned the Microsoft-Motorola case from (relatively) simple a breach of contract action that touched on patent issues to a full-blown, jurisdictionally-confusing beast.

The district court’s jurisdiction over the patent infringement case was previously based “in whole” on the patent laws, while its jurisdiction over the breach of contract case was not based in any way on the patent laws. But now, the district court’s jurisdiction over the consolidated case arises “in part” under the patent laws — the infringement/invalidity claims are still there (and, as we noted, Judge Robart has in fact been ruling on them). The Federal Circuit has explained that its jurisdiction is based on entire cases — not individual issues. See, e.g., Atari, Inc. v. JS&A Group, Inc., 747 F.2d 1422, 1435 (Fed. Cir. 1984) (“‘cases’ will be within the jurisdiction of this court”). Therefore, it seems that once the patent infringement claims became part of the same case, exclusive jurisdiction over the appeal of a final judgment (and consequently, over interlocutory appeals such as Motorola’s appeal of the preliminary injunction) became vested with the Federal Circuit....

Wrapping this all up it appears that under relevant precedent, any appeals in the Microsoft-Motorola RAND case — whether related to patent issues or others — should fall within the exclusive jurisdiction of the Federal Circuit, not the Ninth Circuit (although, like many things in law, it’s not 100% certain). And because the breach of contract and infringement cases had been consolidated at the time of Motorola’s May 2012 appeal of the preliminary injunction, it seems like that appeal should have gone to Fed Circuit as well. Arguably, then, the Ninth Circut’s ruling affirming Judge Robart’s decision to issue the PI was ultra vires (beyond its power) — and the fact that neither party argued differently doesn’t matter, because subject matter jurisdiction can’t be waived by the parties.