Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

AntennaSys v. AQYR Techs.

Remand Required on § 262 Joinder Issue Due to Inadequate Appellate Record

AntennaSys, Inc. v. AQYR Technologies, Inc., __ F.3d __ (Fed. Cir. Oct. 7, 2020) (O’MALLEY, Bryson, Reyna) (D.N.H.: Barbadoro) (2 of 5 stars)

Fed Cir vacates summary judgment of no infringement, and judgment of no liability for state law claims incorporating the infringement claim. AntennaSys’s patent relates to a technique for positioning a portable antenna for communicating with satellites. he asserted patent’s two named inventors had each assigned to their respective employers, AntennaSys and defendant-appellee Windmill (AQYR’s parent, and a defendant on the state law claims but not the infringement claim). The opinion describes a series of transactions raising questions about the extent of AntennaSys and Windmill’s current interests in the patent.

Appellate review of the judgment was improper due to the district court’s failure to resolve the threshold question of whether AntennaSys’s claims against AQYR should have been dismissed for failure to join Windmill as a co-plaintiff, as required by § 262. AQYR’s characterization of this as a “standing” issue was incorrect; per Lexmark, 572 U.S. 118 (2014), “it is improper to discuss requirements for establishing a statutory cause of action in terms of ‘standing.’” Op. at 6. The Fed Cir declines to determine whether AQYR and Windmill waived this argument below, noting that the waiver issue depends on certain concessions allegedly made below that the district court is best positioned to assess. The Fed Cir was also unable to determine the substantive merit of the joinder issue, noting the parties’ “confusing and potentially meritless theories” as well as “certain critical omissions’ in the briefing and the appellate record. It instructs the district court to assess waiver, determine the parties’ ownership interests (if any), determine if any defendant was licensed as a result of the various transactions, and determine the timing of such licenses.

Finally, the opinion instructs that that in the event the district court dismisses the patent claim, “this case belongs in state court.” Op. at 14. The opinion describes how, in that event, the district court would lack subject matter jurisdiction; the narrow exception of Gunn, 568 U.S. 251 (2013), would not apply.

KEYWORDS: JOINDER; LICENSING; SUBJECT MATTER JURISDICTION; STATE LAW