NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
MISCELLANEOUS DOCKET NO. 879
SKY TECHNOLOGIES LLC,
Plaintiff-Respondent,
v.
SAP AG and SAP AMERICA, INC.,
Defendants-Petitioners.
On Petition for Permission to Appeal pursuant to 28 U.S.C. § 1292(b)
from the United States District Court for the Eastern District of Texas in
case no. 2:06-CV-440, Judge David Folsom.
ON PETITION FOR PERMISSION TO APPEAL
Before RADER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and SCHALL, Circuit
Judge.
SCHALL, Circuit Judge.
ORDER
SAP AG and SAP America, Inc. (SAP) petition for permission to appeal an order
certified by the United States District Court for the Eastern District of Texas as one
involving a controlling issue of law as to which there is substantial ground for difference
of opinion and for which an immediate appeal may materially advance the ultimate
termination of the litigation. SAP also moves to stay proceedings in the Texas district
court, pending disposition of this petition by this court. Sky Technologies LLC opposes.
Sky filed this patent infringement suit against SAP in the Eastern District of
Texas. SAP moved to dismiss the suit and alleged that Sky lacked standing. SAP
alleged that there was no written assignment agreement to Cross Atlantic Capital
Partners (XACP) when XACP purchased patents in a foreclosure sale involving patents
owned by Ozro, Inc., and thus XACP could not in turn ultimately assign its interests to
Sky. Citing this court’s recent decision in Akazawa v. New Link Technology
International, Inc., 520 F.3d 1354 (Fed. Cir. 2008), the Texas district court denied the
motion to dismiss and held that under state law title of the patent transferred by
operation of law and no written assignment was needed. Meanwhile, in the United
States District Court for the District of Massachusetts, SAP sued the entities that owned
the patent before the foreclosure sale, seeking a declaratory judgment concerning who
owns the patents and declaratory judgments of noninfringement, invalidity, and
unenforceability. The Massachusetts district court denied a motion to transfer that case
to the Texas district court.
The Texas district court subsequently certified for permissive appeal its order
denying SAP's motion to dismiss, stating that a substantial ground for difference of
opinion may exist concerning whether a transfer of title through operation of law may
apply in situations that do not involve heirs or probate law. In Akazawa v. Link New
Tech. Int'l, Inc., 520 F.3d 1354 (Fed. Cir. 2008), we held ownership of a patent may be
changed by operation of probate law. In Akazawa, we remanded for the district court to
determine whether under Japanese law a patent was transferred to the estate, noting
that pursuant to statute a patent may be granted to "the patentee, his heirs, or assigns."
See 35 U.S.C. 154(a)(1). We noted that "there is nothing that limits assignment as the
only means for transferring patent ownership. Indeed, the case law illustrates that
ownership of a patent may be changed by operation of law." Akazawa, 520 F.3d at
1356. In contrast, 35 U.S.C. § 261 requires that all assignments be in writing.
Ultimately, this court must exercise its own discretion in deciding whether it will
grant permission to appeal interlocutory orders certified by a trial court. See In re
Convertible Rowing Exerciser Patent Litigation, 903 F.2d 822 (Fed. Cir. 1990); 28
Misc. 879 -2-
U.S.C. § 1292(d)(2) (“the Federal Circuit may, in its discretion, permit an appeal to be
taken from such order”). We determine that granting the petition in these circumstances
is warranted.
Concerning SAP's request to stay proceedings in the Texas district court, we
note that the Texas district court stated that if this court grants the petition for
permission to appeal, it would consider staying its proceedings. We deem the better
course is for the Texas district court to consider that issue in the first instance.
Accordingly,
IT IS ORDERED THAT:
(1) The petition for permission to appeal is granted.
(2) The request to stay proceedings in the Texas district court is denied
without prejudice.
FOR THE COURT
Sept. 10, 2008 /s/ Alvin A. Schall
Date Alvin A. Schall
Circuit Judge
cc: Paul S. Grewal, Esq.
Brian Melton, Esq.
s19
Misc. 879 -3-