Background
FullView, Inc. sued Polycom, Inc. in 2018 in the U.S. District Court for the Northern District of California (Case No. 3:18-cv-00510-EMC), alleging patent infringement. As the case progressed before District Judge Edward M. Chen, two rulings went against FullView that it wanted to challenge before trial could conclude: (1) some of FullView’s asserted patent claims were held invalid under 35 U.S.C. § 101, the statute that governs patent-eligible subject matter (the doctrine applied in Alice and Mayo); and (2) the court excluded the expert testimony that FullView planned to use to prove damages.
Ordinarily, a party cannot appeal a district court’s rulings until a final judgment ends the case. But 28 U.S.C. § 1292(b) creates a narrow exception: a district court may certify that an order involves a “controlling question of law” as to which there is “substantial ground for difference of opinion” and that an immediate appeal “may materially advance the ultimate termination of the litigation.” If the district court certifies the order, the losing party can ask the court of appeals for permission to take that interlocutory appeal.
Judge Chen certified both the § 101 invalidity ruling and the damages-expert exclusion under § 1292(b), and FullView petitioned the Federal Circuit for permission to appeal.
The Court’s Holding
In a brief, nonprecedential order authored by Judge Reyna (joined by Judges Dyk and Hughes), the Federal Circuit denied FullView’s petition. The panel emphasized that granting a § 1292(b) petition is a matter of appellate discretion: “this court must exercise its own discretion in deciding whether to grant permission to appeal an interlocutory order,” citing In re Convertible Rowing Exerciser Pat. Litig., 903 F.2d 822 (Fed. Cir. 1990).
The order does not explain the panel’s reasoning in detail — it simply declines to exercise the court’s discretion in favor of interlocutory review, leaving both certified rulings intact. FullView will have to wait until the district court enters a final judgment before it can seek appellate review of the § 101 invalidity ruling or the expert-exclusion order.
Key Takeaways
- District-court certification under § 1292(b) is necessary but not sufficient — the Federal Circuit still exercises independent discretion over whether to hear the interlocutory appeal.
- The Federal Circuit rarely grants § 1292(b) petitions in patent cases, even for significant rulings like § 101 invalidations or damages-expert exclusions.
- Patent plaintiffs who lose a mid-litigation ruling generally cannot shortcut appellate review; they must either settle, drop the dismissed claims, or try the surviving claims to final judgment and then appeal.
- The order is nonprecedential, so it does not bind future panels — but it reinforces the court’s longstanding reluctance to grant interlocutory review in patent cases.
Why It Matters
For patent owners facing adverse pretrial rulings — especially § 101 dismissals that narrow a case but don’t end it — this order is a reminder that waiting out the district court is usually the only path forward. Interlocutory appeals under § 1292(b) are rarely granted in any patent case, and the Federal Circuit’s willingness to deny petitions without detailed explanation makes the strategic calculus harder for plaintiffs.
Practically, this means patent plaintiffs whose best claims survive but weakest claims fall to § 101 will often choose to proceed to trial on the survivors — even at significant additional cost — rather than betting on a long-shot interlocutory appeal. For defendants who win a partial § 101 victory, the odds favor holding that victory through trial without facing a premature appellate challenge.