This morning, the Federal Circuit released two precedential opinions and two nonprecedential orders. Both opinions come in patent cases appealed from the Eastern District of Texas. One affirms a dismissal on both venue and eligibility grounds. The other finds the court lacks jurisdiction over a settlement agreement dispute and transfers the case to the Fifth Circuit. One of today’s orders effectuates the transfer, and the other lifts a stay and partially dismisses consolidated appeals from the Patent Trial and Appeal Board. Here are the introductions to the opinions along with links to the orders.
AML IP, LLC v. Bath & Body Works Direct, Inc. (Precedential)
AML IP, LLC (“AML”) sued Bath & Body Works Direct, Inc. and The Buckle, Inc. (“Appellees”) in the U.S. District Court for the Eastern District of Texas for infringing U.S. Patent No. 6,876,979 (“the ’979 patent”).
Each Appellee moved to dismiss—for both (1) improper venue and (2) failure to state a claim upon which relief can be granted, due to the ’979 patent’s claims being allegedly ineligible for patenting under 35 U.S.C. § 101.
The district court, in a single order, dismissed on both grounds. It first concluded that venue was improper and dismissed for that reason. It then analyzed the ’979 patent’s claims, deemed them ineligible for patenting, and dismissed for that reason as well.
On appeal, AML does not dispute the merits of the district court’s conclusions as to venue or eligibility. Instead, it argues that, after the court concluded that venue was improper and dismissed for that reason, the court erred by going further and dismissing for ineligibility as well. For the reasons below, we affirm.
T-Mobile US, Inc. v. Kaifi LLC (Precedential)
T-Mobile US, Inc. and T-Mobile USA, Inc. (collectively, T-Mobile) and patent owner KAIFI LLC (KAIFI) settled a lawsuit in which KAIFI alleged that T-Mobile infringed several claims of U.S. Patent No. 6,922,728 (’728 patent). At the time of settlement, an ex parte reexamination (EPR) of the ’728 patent, which T-Mobile had initiated, was pending at the United States Patent and Trademark Office (Patent Office). Under the settlement agreement, T-Mobile agreed to make an immediate payment to KAIFI for a certain amount, which it did. T-Mobile also agreed to make an additional payment to KAIFI at the conclusion of the reexamination “if any Asserted Claim survives the EPR.” After the Patent Office confirmed the patentability of multiple claims, without amendment, that had been asserted in the lawsuit, T-Mobile sought a declaratory judgment that no asserted claims “survive[d]” the EPR and that therefore it had not breached the settlement agreement by refusing to make the additional payment. The district court granted summary judgment in KAIFI’s favor on all claims, including its counterclaim for breach of contract, and ordered T-Mobile to make the additional payment to KAIFI.
Both parties contend that we have appellate jurisdiction over this case concerning the interpretation of the settlement agreement phrase “survives the EPR.” We disagree. Because the dispute here is a matter of contract interpretation, which is a state law issue that does not necessarily depend on resolving a substantial patent law question, we lack subject-matter jurisdiction. We therefore transfer the case to the United States Court of Appeals for the Fifth Circuit, which has appellate jurisdiction over cases from the District Court for the Eastern District of Texas.