Just a brief update on two precedential decisions the United States Court of Appeals for the Federal Circuit has handed down today:
- In a case where a licensing firm named AML IP appealed the dismissal of a case against Bath & Body Works, The Buckle, and other defendants, the Federal Circuit has decided (PDF) that a district court may dismiss a case for improper venue and yet move on to find a failure to state a claim upon which relief can be granted in the form of a patent-ineligibility decision. Venue can be waived, and in principle, a district court does have the power to rule on patent ineligibility (which was not necessary in this case). The appellant also asked the Federal Circuit to hold that the unnecessary ineligibility ruling would not have a preclusive effect on future cases. The Federal Circuit declined this invitation to take an advisory opinion on something that, in the appeals court’s opinion, is to be decided in future cases over the same patent.
- In a case between patent licensing firm Kaifi and T-Mobile, the latter appealed a decision by the United States District Court for the Eastern District of Texas on a license agreement that settled a prior infringement dispute. Both parties wanted the Federal Circuit to decide, but the appeals court declined (PDF) to interpret the term “survives” (in connection of whether a patent is upheld in an ex parte reexamination):
- Applying the three-part Gunn test, the appeals court found that no question of patent law (such as infringement) necessarily had to be resolved. In the case at hand, the district court saw the EPR certificate, and after the EPR, there still was a patent, albeit an amended one. The question of whether “survives” means that the patent is still infringed (absent a license) is a question of contract law and, therefore, state law. No pure issue of federal law was dispositive.
- The district court had diversity jurisdiction, so the matter is in federal court even though it is a contract dispute. That’s why the Federal Circuit has transferred this appeal to the Fifth Circuit.