Patent Case Summaries - October 2020 #2

Alston & Bird

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

AntennaSys, Inc. v. AQYR Technologies, Inc., et al., No. 2019-2244 (Fed. Cir. (D.N.H.) Oct. 7, 2020). Opinion by O’Malley, joined by Bryson and Reyna.

As co-owners of the patent-in-suit, AntennaSys and Windmill International entered into an agreement for Windmill to sell patented products and pay AntennaSys royalties. Later, AntennaSys sued Windmill’s wholly owned subsidiary, AQYR, for patent infringement, and sued both AQYR and Windmill under certain state law claims. After claim construction, AntennaSys conceded that it could not prevail, and the district court entered summary judgment on AntennaSys’s patent infringement and related state law claims. AntennaSys appealed.

On appeal, Windmill and AQYR argued that under 35 U.S.C. § 262 AntennaSys lacked “standing” to bring a patent infringement claim absent joinder of Windmill as a co-plaintiff. As an initial matter, the Federal Circuit reiterated that “it is improper to discuss requirements for establishing a statutory cause of action in terms of ‘standing.’” The statutory requirements of § 262 “are not jurisdictional in nature.”

Despite their non-jurisdictional nature, the Federal Circuit explained that whether AntennaSys met the statutory requirements for bringing an infringement claim nonetheless “is a threshold question that both we and the district court must resolve before reaching the district court’s claim construction and summary judgment rulings.” The Federal Circuit expressed frustration that the parties left “many threshold issues” unresolved, and the court “refuse[d] to take the parties’ invitation to rule on these issues in the first instance and on an incomplete record.” Because the district court had not addressed the underlying factual issues, the Federal Circuit remanded.

Lastly, the Federal Circuit explained that, on remand, “to the extent the district court concludes that AntennaSys’s patent infringement claim—the sole federal question count in the lawsuit—should be dismissed, the district court had no independent jurisdiction over the state law counts in AntennaSys’s complaint. Accordingly, if the patent infringement count is dismissed, this case belongs in state court.”

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