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Federal Circuit Partially Rejects Appeal as Based on Non-Final Judgments
Thursday, June 25, 2020

The US Court of Appeals for the Federal Circuit affirmed in part and dismissed in part a district court’s final judgment for lack of jurisdiction, concluding that the judgment below was final only as to one of multiple defendants. Iron Oak Technologies, LLC v. Microsoft Corporation, Case No. 19-1802 (Fed. Cir. June 8, 2020) (Hughes, J.).

Iron Oak sued various technology manufacturers in 2016 and 2017, alleging that their services and products infringed upon two of Iron Oak’s patents (the manufacturer lawsuits). Although Iron Oak did not specifically name Microsoft or its products in any of the lawsuits, Microsoft filed suit against Iron Oak “seeking a declaratory judgment action that Microsoft has not infringed, induced others to infringe, or contributed to the infringement of any claim of the patents at issue.” According to Microsoft, Iron Oak’s patent lawsuits implicated Microsoft’s software installed on the manufacturers’ allegedly infringing devices. Microsoft’s action and the manufacturer lawsuits were subsequently consolidated in the Northern District of Texas. Microsoft moved for summary judgment on the grounds that Iron Oak should be barred from recovering damages from the manufacturers’ devices that use any of Microsoft’s products, because Iron Oak failed to provide sufficient notice under 35 USC § 287 to any of the manufacturers that Microsoft’s products allegedly infringed.

The district court agreed, granting partial summary judgment in the manufacturer lawsuits and dismissing as moot both Microsoft’s declaratory judgment claims and Iron Oak’s infringement counterclaims. After the district court refused to reconsider the decision, Iron Oak appealed. Iron Oak argued that the district court applied the incorrect standard under § 287 in determining that Iron Oak’s pre-suit notice letters to the manufacturers did not provide sufficient notice regarding infringement by Microsoft products on the manufacturers’ allegedly infringing devices.

In a nonprecedential opinion, the Federal Circuit affirmed the district court’s decision only to the extent that Iron Oak did not provide sufficient pre-suit infringement notice under § 287 to Microsoft. The Federal Circuit held, however, that to the extent the district court’s final judgment purported to extend beyond Microsoft (the only defendant in the case on appeal) and to the sufficiency of § 287 notice to defendants outside of this case, “the judgment is not final.” The Federal Circuit noted that it took “no position on the district court’s conclusion on the sufficiency of [§ 287] notice provided to the defendant” manufacturers in the manufacturer lawsuits, because the Federal Circuit lacked jurisdiction to address that issue while the manufacturer lawsuits were still pending.

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