Appellant John F. Brennan, and cross-appellants Abbott Laboratories, Andrew J. Muetterties and Joseph N. Genese (collectively “Abbott”), ask our review of various aspects of the judgment of the United States District Court for the Eastern District of Michigan, including rulings on certain pre- and post-trial motions. 1
Background
This case arose upon interference proceedings in the United States Patent and Trademark Office (the “PTO”), involving a patent application of which Mr. Brennan is the inventor, a patent owned by Abbott Laboratories of which Andrew J. Muetterties and Joseph N. Genese are joint inventors, and a reissue application owned by Abbott and naming only Muetterties as inventor. The invention of the counts of the interference is an intravenous delivery device for sequentially administering two medical liquids to a patient, each at a different flow rate.
The Board of Patent Appeals and Interferences awarded priority of invention to Brennan. The Board held that the Muet-terties/Genese dates of conception and reduction to practice were prior to those of Brennan, but that because an attorney for Abbott had backdated a request for extension of time and falsely averred that the request had been timely made, this activity constituted inequitable conduct, with the result that Abbott was not awarded priority.
Brennan v. Muetterties,
Abbott brought a civil action in the district court pursuant to 35 U.S.C. § 146, 2 seeking to set aside the award of priority to Brennan. Brennan counterclaimed for fraudulent misrepresentation, abuse of process, tortious interference with economic relations, antitrust violations under the Sherman and Clayton Acts, violation of the Racketeer Influenced and Corrupt Organizations Act, and intentional infliction of emotional distress. The district court dismissed Brennan’s claims for antitrust and RICO violations, intentional infliction of emotional distress, and fraudulent misrepresentation. The court declined to dismiss the claims for tortious interference and abuse of process.
Abbott then moved for summary judgment on the issue of priority of inventor-ship, arguing that the Board erred as a matter of law in awarding priority to Brennan based on Abbott’s inequitable conduct. Abbott’s position was that priority must be awarded to the first inventor, and that enforceability due to inequitable conduct is a separate issue, not determinative of priority. The district court granted summary judgment of priority of invention to Abbott, and remanded to the Board with instructions to refer the matter to the Commissioner of Patents and Trademarks “for the purpose of considering the allegations of inequitable conduct”. On Brennan’s motion the district court stayed trial of Brennan’s remaining counterclaims pending the Commissioner’s decision.
Upon remand the Board issued another decision awarding priority to Brennan due to Abbott’s inequitable conduct, apparently ignoring the district court’s contrary judgment. Brennan v. Muetterties, Interf. Nos. 100,817 and 101,078 (Bd.Pat.App. & Int. May 27, 1988). The Board explained that under “controlling law” the Board was “precluded from awarding priority against both parties.” Id. at 4. The Board then referred the case to the Commissioner as the district court had ordered; the Commis *1349 sioner deferred review on his part until after judicial review of the Board’s award of priority to Brennan. Upon return of the case to the district court, the parties filed cross motions for summary judgment on the issue of priority of invention. After a hearing, now before a different judge, the district court granted Brennan’s motion and denied Abbott’s; that is, the court awarded priority to Brennan because of Abbott’s inequitable conduct. The prior judgment in favor of Abbott was vacated and judgment was entered in favor of Brennan. Abbott has not appealed this decision, and we do not consider its merits, or the correctness of the Board’s view of the law.
Brennan then moved for sanctions against Abbott under Fed.R.Civ.P. 11, requesting award of costs and attorneys fees incurred in defending the 35 U.S.C. § 146 action in the district court. Abbott cross-moved for sanctions, stating that Brennan’s counterclaims were not well-grounded in fact or law, and that Brennan’s Rule 11 motion was frivolous. Both sides’ motions were denied.
Trial was held to a jury on Brennan’s counterclaims for tortious interference with economic relations and tortious abuse of process during the prosecution of the interference proceeding before the PTO. The jury returned a verdict in favor of Abbott on the tortious interference claim, and for Brennan on the abuse of process claim. The jury awarded Brennan damages of $1,350,000 for abuse of process, designated as $1,070,000 for emotional injuries, $250,000 for attorney fees, and $30,-000 for out-of-pocket costs; all for the interference proceeding. The district court denied both sides’ requests for judgment n.o.v. and a new trial, and denied renewed requests for Rule 11 sanctions. The court granted Abbott’s motion to clarify the judgment, to the extent that prejudgment interest was disallowed for the period during which the 35 U.S.C. § 146 action was stayed because of the referral to the PTO, and for two shorter periods of stay. The court denied Abbott’s motion for remittitur of the award of emotional damages, but remitted the award of attorney fees to $89,-439.75 and costs to $11,951.38, the actual sums incurred.
Brennan appeals the denial of his motions for sanctions under Rule 11 and for a new trial on his counterclaim of tortious interference with economic relations. Brennan also appeals the dismissal of his antitrust counterclaim and the grant of Abbott’s motion that affected the amount of prejudgment interest. Abbott cross-appeals the denial of its motion for judgment n.o.v. or a new trial on the issue of abuse of process, and the partial denial of its alternative motion for remittitur.
Jurisdiction
Upon Abbott’s omission of appeal of the issue of priority of invention, the remaining issues are either matters of state law based on pendent jurisdiction, or issues of federal law that are not within the exclusive assignment of the Federal Circuit, but that were properly included at trial of the case. See Fed.R.Civ.P. 13(a); see generally 3 Moore’s Federal Practice, ¶ 13.13 (2d ed. 1983). No issues arising under the patent law remain, and none is referred to in the notice of appeal. We thus have reviewed sua sponte our jurisdiction over this appeal.
Abbott’s civil action was brought under 35 U.S.C. § 146. The district court’s jurisdiction arose in part under Title 35, the codification of the patent law, and thus satisfies the requirement of:
28 U.S.C. § 1338(a). The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents....
All appeals in such circumstances are assigned exclusively to the Federal Circuit:
28 U.S.C. § 1295(a)(1). The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction— (1) of an appeal from a final decision of a district court of the United States ... if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title....
The path of appeal is determined by the basis of jurisdiction in the district court, *1350 and is not controlled by the district court’s decision or the substance of the issues that are appealed. The reasons are pragmatic: to avoid creating fresh opportunities for forum shopping; to avoid bifurcation of issues and cases at trial and on appeal; to remove uncertainty and the abuses of procedural maneuvering; and, ultimately, to facilitate resolution of disputes.
Thus, the direction of appeal to the Federal Circuit does not change during or after trial, even when the only issues remaining are not within our exclusive assignment.
See, e.g., Technicon Instruments Corp. v. Alpkem Corp.,
The path of this appeal was established with the filing of the civil action to obtain a patent in accordance with 35 U.S.C. § 146 and, although the § 146 issue was not appealed, this appeal of the other issues was correctly taken to the Federal Circuit.
I
BRENNAN’S APPEAL A
Rule 11 Sanctions
Mr. Brennan argues that the district court erroneously denied his request for sanctions under Fed.R.Civ.P. 11 based on Abbott’s filing of the civil action under 35 U.S.C. § 146, which Brennan states was for the purpose of harassment, to delay Brennan’s receiving his patent after the award of priority by the PTO, and to increase his costs.
A district court's Rule 11 determination is reviewed on the standard of abuse of the trial court's discretionary authority.
Cooter & Gell v. Hartmarx Corp.,
In this case the district court’s denial of sanctions is well supported. The patent law authorizes any party to a patent interference to take civil action in the district court. 35 U.S.C. § 148. Such action is taken as of right. The vagaries of litigation inevitably delay final resolution of disputes. However, Congress has preserved this right of recourse to the courts from a decision of the PTO: a statutory right available at least since 1836. Act of July 4, 1836, § 16, 5 Stat. 117, 123-24. Absent improper purpose, a litigant’s exercise of a statutory right of action can not be, of itself, a sanctionable offense.
See Cooter & Gell,
Brennan argues that Abbott’s position on the issue of priority under 35 U.S.C. § 146 was so obviously devoid of merit as to warrant sanctions. However, the district judge to whom the case was first assigned granted Abbott’s motion for summary judgment based on Abbott’s position that
*1351
inequitable conduct by counsel can not direct the decision of priority of invention. Although this question is not before us for review, this is not an area in which the law is so clear that Abbott’s challenge in district court was “unreasonable under the circumstances.”
Century Products, Inc. v. Sutter,
The district court’s denial of Brennan’s request for Rule 11 sanctions is affirmed.
B
Tortious Interference with Economic Relations
The jury decided the issue of tortious interference with economic relations in favor of Abbott. Brennan argues that the district court abused its discretion in denying his motion for a new trial on this issue. Brennan states that the district court committed several errors at trial: in allowing Abbott to present the rebuttal testimony of three experts on medical devices, when Abbott did not disclose their identity until the day before trial; in precluding Brennan’s expert, Dr. Coffey, from giving testimony on lost royalties; in excluding evidence of Abbott’s marketing projections for its allegedly competing product; and in instructing the jury that it was required to determine whether “but for” Abbott’s conduct Brennan would not have suffered harm, instead of instructing the jury that it need only determine whether Abbott’s conduct was a “substantial factor” in causing harm to Brennan. We consider these issues seri-atim.
1. The Rebuttal Witnesses
The Sixth Circuit practice is that “no error in the admission or exclusion of evidence is ground for reversal or granting a new trial unless refusal to take such action appears to the court to be inconsistent with substantial justice.”
TCP Industries, Inc. v. Uniroyal, Inc.,
The three medical witnesses, Melissa Kraus, Edward Hayman, and Larry Shoup, were called by Abbott in rebuttal to testimony by Brennan’s witnesses Anna Dugan and Leon Pedell relating to the medical efficacy of the invention that was the subject of the patent interference. Abbott first revealed its intention to call these witnesses the day before trial. Brennan objected to the admission of their testimony, claiming unfair surprise. Abbott stated that the late identification of these witnesses was the result of its having been surprised to learn that Dugan and Pedell would testify on the issue of medical efficacy-
Brennan has not shown that he was prejudiced by the admission of this rebuttal testimony, or that there were unfair trial tactics or procedures, or that it was inappropriate in rebuttal. The trial court did not abuse its discretion in allowing the testimony of these witnesses under the circumstances that prevailed.
2. Expert Testimony on Royalties
Brennan’s position was that he would have obtained a patent and earned royalties on the invention at issue, were it not for the delay caused by Abbott’s maintenance of the interference proceeding. The district court ruled that Dr. Coffey could not testify as an expert on the issue of royalties. Dr. Coffey had stated that he was not an expert on patent royalties, and that he had no prior experience of analyz
*1352
ing the market for a medical device, or any other product. The court could well have concluded that Dr. Coffey’s testimony on this issue was not of expert dimension.
See Mannino v. International Manufacturing Co.,
The trial judge has broad discretion in determining whether to admit expert testimony on any subject. Its ruling may not be disturbed absent clear error.
Lee Shops, Inc. v. Schatten-Cypress Co.,
3. Abbott’s Sales Projections
Brennan states that the district court erred in excluding evidence relating to Abbott’s sales projections for an intravenous delivery device that Abbott was developing at the time of the patent interference. Brennan sought this evidence to establish Abbott’s motive for tortiously interfering with Brennan’s business expectations. Abbott argued that this device was one of several being considered by Abbott, and that the profit projections were not realized, and were speculative. The district court ruled that this evidence was not relevant because, inter alia, the documents did not show that the Abbott and Brennan proposed devices were similar. The court also expressed concern that allowing this evidence would create the risk of relitigating priority of invention, which issue had already been decided.
When balancing probative value against possible prejudice, the trial court has broad discretion.
See
Fed.R.Evid. 403;
Finch v. Monumental Life Ins. Co.,
4. Jury Instructions on Tortious Interference
Brennan asserts that the district court erroneously and inconsistently instructed the jury as to the proper standard of causation of damages from the tort of interference with economic relations. The court told the jury:
Before Mr. Brennan can prevail on either claim, he must prove by a preponderance of the evidence any damages sustained were proximately caused by the Defendants’ actions.
Proximate cause is an act which, in the natural and continuous sequence, directly produces the harm without which the harm would not have occurred.
* * * * * *
When more than one act or factor may be the cause of the harm, it is necessary to determine whether, but for the Defendants’ acts, Plaintiff would not have suffered any harm.
* * * * * *
If the Defendants’ conduct was not a substantial factor in causing a third party not to enter into a relationship or continue a relationship with Mr. Brennan, the Defendants cannot be found responsible for Mr. Brennan’s failure to enter into a relationship or continue a relationship.
*1353 The conduct of the Defendants was not a substantial factor in causing the Plaintiff’s loss if reasonable men and women would not regard it as a cause of loss.
Mr. Brennan argues that the “but for” instruction (in the third quoted paragraph) is inconsistent with the “substantial factor” instruction (in the fifth paragraph), which Brennan asserts is the correct standard. This inconsistency, Brennan states, is reversible error requiring a new trial. Brennan had raised this objection to the district court, and thus the issue is properly before us. Fed.R.Civ.P. 51.
In reviewing the jury charge for correctness and adequacy, the jury instructions are viewed as a whole.
Howard v. Chesapeake and Ohio Ry. Co.,
Generally, a charge that contains an inaccurate or ambiguous statement does not constitute reversible error if the inaccuracy or ambiguity is unlikely to mislead the jury. In considering whether an isolated clause in the jury instructions is likely to have misled the jury, a reviewing court must consider the entire charge. Thus, the critical inquiry is whether the instructions as a whole provide the jury with sufficient guidance concerning the issues to be tried.
Teal v. El. DuPont deNemours & Co.,
Commentators have explained that the “but for” and “substantial factor” standards of causation generally yield identical results:
Except in the classes of cases indicated [not here relevant], no case has been found where the defendant’s act could be called a substantial factor when the event would have occurred without it; nor will cases very often arise where it would not be such a factor when it was so indispensable a cause that without it the result would not have followed.
Prosser & Keeton, Torts, at p. 268 (5th ed. 1984) (footnotes omitted); see generally Restatement (2d) of Torts, § 431, comment a (1965) (explaining the distinction between substantial cause in the legal sense and cause in the “philosophic” sense). Michigan courts have treated the substantial factor test as the more rigorous:
Causation in fact includes more than a simple “but for” relationship between the negligent act and the damage. The negligence must also be a “substantial factor” in producing the injury.
Derbeck v. Ward,
Applying this guidance, and viewing the instructions in context and in their entirety, Clarksville-Montgomery, supra, we conclude that the trial court did not mislead the jury on the factors to be considered and the law to be applied, and that Mr. Brennan was not prejudiced by the jury instructions. The court did not abuse its discretion in denying Brennan’s motion for a new trial on this ground.
C
The Antitrust Counterclaim
Mr. Brennan argues that the district court erred in dismissing his counterclaim for violation of the Clayton and Sherman Acts. Inter alia, Brennan had alleged that Abbott, by continuing to prosecute the interference and by filing the 35 U.S.C. § 146 action after having engaged in inequitable conduct, was attempting to monopolize commerce in the subject matter of the contested invention. 4
*1354
In determining whether to dismiss a claim pursuant to Fed.R.Civ.P. 12(b)(6), the district court accepts as true all of the factual allegations of the complaint. Appellate review is on the same basis.
Kerasotes Michigan Theatres, Inc. v. National Amusements, Inc.,
In an antitrust action “the complaint need only allege sufficient facts from which the court can discern the elements of an injury resulting from an act forbidden by the antitrust laws.”
Kerasotes Michigan Theatres,
Brennan asserts that the allegations of his antitrust claim state a cause of action in accordance with
Walker Process Equipment, Inc. v. Food Machinery and Chemical Corp.,
A patent does not of itself establish a presumption of market power in the antitrust sense.
Walker Process,
Determination of whether the pat-entee meets the Sherman Act elements of monopolization or attempt to monopolize is governed by the rules of application of the
*1355
antitrust laws to market participants, with due consideration to the exclusivity that inheres in the patent grant.
See Loctite Corp. v. Ultraseal, Ltd.,
A common misconception has been that a patent or copyright, a high market share, or a unique product that competitors are not able to offer suffices to demonstrate market power. While each of these three factors might help to give market power to a seller, it is also possible that a seller in those situations will have no market power: for example, a patent holder has no market power in any relevant sense if there are close substitutes for the patented product.
See generally W. Montgomery, The Presumption of Economic Power for Patented and Copyrighted Products in Tying Arrangements, 85 Colum.L.Rev. 1140, 1150-51 (1985) (“the existence of a patent or a copyright provides little, if any, evidence of supernormal profits, barriers to entry, consumer preferences, or absence of adequate substitutes. It thus does not dispose of the question whether a product has market power”). Analysis under the rule of reason takes into consideration the policy underlying the patent grant and the national interest served; for the public purpose of the patent grant as an incentive to invention, investment, and disclosure, is achieved solely by the statutory right to exclude. See generally W. Bowman, Patent and Antitrust Law 1-14 (1973).
The Sixth Circuit has rejected “any absolute presumption of market power for copyright or patented product”.
A.I. Root Co. v. Computer/Dynamics, Inc.,
The district court correctly held that Brennan failed to state a cause of action under the Sherman Act. The dismissal of Brennan’s antitrust counterclaims is affirmed.
II
ABBOTT’S CROSS-APPEAL
Abbott appeals the judgment entered upon the jury finding of abuse of process, including the damages awarded for emotional distress.
Abbott argues that Brennan’s counterclaim for abuse of process should have been dismissed as a matter of law, because no judicial process was involved in the interference proceedings before the United States Patent and Trademark Office, and because PTO proceedings are not subject to collateral attack under state law. The district court had denied Abbott’s motion for dismissal, ruling that the prémises of the tort of abuse of process under Michigan law had been met. We review
de novo
the correctness of the district court’s determination of state law.
Salve Regina College v. Russell,
— U.S. -,
We need not decide the broad question of whether actions in connection with federal administrative proceedings can ever provide the “process” for a common law claim of abuse of process. Before us is the narrow question of whether the state tort action for abuse of process can be invoked as a remedy for inequitable or other unsavory conduct of parties to proceedings in the Patent and Trademark Office. We conclude that it can not.
The patent grant is within the exclusive purview of federal law.
Sears, Roebuck & Co. v. Stiffel Co.,
Prior judicial consideration of this question is sparse. In
Baker Driveaway Co., Inc. v. Bankhead Enterprises, Inc.,
The court in
Baker Driveaway
observed that the plaintiffs were not challenging the way the proceeding before the PTO was handled, but instead were challenging the motives for its institution. This observation provided another reason for the court’s dismissal of the count, for under Michigan law the tort of abuse of process requires that “one must be challenging the way that some proceeding is handled rather than the motives for its institution.”
Id.,
The
Baker Driveaway
court also discussed the policy of allowing the administrative agency to decide matters properly before it, and declined to create a new system of judicial overview of actions before the PTO. This reasoning accords with that expressed in
Gilbert v. Ben-Asher,
The only authorities cited by Brennan in support of this action do not relate to analogous administrative proceedings. E.g.,
Friedman v. Dozorc,
We conclude that the federal administrative process of examining and issuing patents, including proceedings before the PTO’s boards, is not subject to collateral review in terms of the common law tort of abuse of process. The PTO procedures themselves provided a remedy for Abbott’s malfeasance.
5
An additional state action would be an inappropriate collateral intrusion on the regulatory procedures of the PTO, “under the guise of a complaint sounding in tort”, in the words of
Gilbert v. Ben-Asher,
The judgment of abuse of process is reversed, as is the award of damages therefor.
Summary
On Mr. Brennan’s appeal, the denial of sanctions under Rule 11, the dismissal of the antitrust counterclaims, and the denial of a new trial on the tortious interference counterclaim, are affirmed. On Abbott’s cross-appeal, the judgment of abuse of process, and the award of damages therefore, is reversed. Other issues raised on this appeal, such as prejudgment interest, are mooted.
No costs.
AFFIRMED IN PART, REVERSED IN PART.
Notes
. Abbott Laboratories v. Brennan, No. 86-70935 (E.D.Mich. November 20, 1986) (Order); Abbott Laboratories v. Brennan, No. 86-70935 (E.D.Mich. November 20, 1989) (Order); Abbott Laboratories v. Brennan, No. 86-70935 (E.D.Mich. December 21, 1989) (Judgment); Abbott Laboratories v. Brennan, No. 86-70935 (E.D.Mich. February 22, 1990) (Order).
. 35 U.S.C. § 146. Civil action in case of interference
Any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences, may have remedy by civil action.... In such suits the record in the Patent and Trademark Office shall be admitted on motion of either party ... without prejudice to the right of the parties to take further testimony....
. We apply Sixth Circuit law on review of the district court’s rulings on Rule 11 and other matters not within the Federal Circuit’s exclusive purview.
See Atari, Inc. v. JS & A Group, Inc.,
. Section 2 of the Sherman Act, 15 U.S.C. § 2, prohibits monopolization or attempts to monopolize:
Every person who shall monopolize, or attempt to monopolize, or combine or conspire with any other person or persons, to monopolize any part of the trade or commerce among the several States, or with foreign nations, shall be deemed guilty of a felony....
*1354 Section 4(a) of the Clayton Act, 15 U.S.C. § 15(a), provides for civil action for treble damages for violation of the antitrust laws.
. Brennan was awarded a patent although the PTO found that Brennan was not the first inventor of the subject matter.