On March 11th in Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., __ F.3d __ (Fed. Cir. 2010)(Gajarsa, J.), proceedings below, 571 F. Supp. 2d 1199 (D. Colo. 2008), a split Federal Circuit transferred an appeal to the Tenth Circuit and refused to entertain appellate jurisdiction in a contract dispute arising out of the earlier litigation that had reached the Supreme Court on patent-eligibility, cert. granted, 546 U.S. 999 (2005), cert. dismissed as improvidently granted, 548 U.S. 124 (2006).

Different View by the third member of the Court: “At its heart, this case involves the question whether the res judicata effect of our earlier decision in Metabolite Laboratories, Inc. v. Laboratory Corp. of America Holdings, 370 F.3d 1354 (Fed. Cir. 2004) (‘Metabolite II’), requires that the contract provision here be treated as terminated. The majority finds that we lack jurisdiction over that question and transfers to the 10th Circuit, so that the 10th Circuit must determine the res judicata effect of our prior judgment. In my view, jurisdiction over this case lies in this court for at least two reasons. First, we have jurisdiction because a suit to enforce or determine the res judicata effect of a prior judgment ‘arising under’ the federal patent laws is itself a suit that arises under the federal patent laws. Second, the determination of contract entitlement rests on a substantial question of patent law.” Lab. Corp. v. Metabolite, __ F.3d at __ (Dyk, J., dissenting).

Judging the Controversy at the Time of Filing: “The fundamental error of the majority is that … it fails to look at the controversy prevailing at the time that the complaint was filed. Under established Supreme Court authority, later concessions … do not operate to defeat jurisdiction that rightfully attached at the outset of the case. See, e.g., Dole Food Co. v. Patrickson, 538 U.S. 468, 478 (2003); St. Paul Mercury Indemnity Co. v. Red Cab Co., 303 U.S. 283, 289-90 (1938) (‘Events occurring subsequent to the institution of suit... do not oust jurisdiction.’); Minneapolis & St. Louis R.R. Co. v. Peoria & Pekin Union Ry. Co., 270 U.S. 580, 586 (1926) (‘The jurisdiction of the lower court depends upon the state of things existing at the time the suit was brought.’); Anderson v. Watt, 138 U.S. 694, 702-03 (1891) (‘And the [jurisdictional] inquiry is determined by the condition of the parties at the commencement of the suit.’); Mollan v. Torrance, 22 U.S.(9 Wheat.) 537, 539 (1824) (‘[T]he jurisdiction of the Court depends upon the state of things at the time of the action brought, and... after vesting, it cannot be ousted by subsequent events.’).” Id., __ F.3d at __.

The opinion is available at http://www.cafc.uscourts.gov/opinions/08-1597.pdf