Case: 19-1802 Document: 53 Page: 1 Filed: 06/08/2020
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IRON OAK TECHNOLOGIES, LLC,
`Plaintiff-Appellant
`
`v.
`
`MICROSOFT CORPORATION,
`Defendant-Appellee
`______________________
`
`2019-1802
`______________________
`
`Appeal from the United States District Court for the
`Northern District of Texas in No. 3:18-cv-00222-M, Chief
`Judge Barbara M.G. Lynn.
`______________________
`
`Decided: June 8, 2020
`______________________
`
`ROBERT JAMES MCAUGHAN, JR., McAughan Deaver
`PLLC, Houston, TX, argued for plaintiff-appellant. Also
`represented by ALBERT BERTON DEAVER, JR.
`
` JOSHUA JOHN FOUGERE, Sidley Austin LLP, Washing-
`ton, DC, argued for defendant-appellee. Also represented
`by CONSTANTINE L. TRELA, JR., RICHARD ALAN CEDEROTH,
`Chicago, IL; MICHAEL J. BETTINGER, San Francisco, CA.
` ______________________
`
`
`

`

`Case: 19-1802 Document: 53 Page: 2 Filed: 06/08/2020
`
`2
`
`IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
`
`Before LOURIE, MOORE, and HUGHES, Circuit Judges.
`HUGHES, Circuit Judge.
`Iron Oak Technologies, LLC appeals from the Agreed
`Final Judgment of the United States District Court for the
`Northern District of Texas in Microsoft Corporation’s de-
`claratory judgment action. Because resolving an appeal of
`the Agreed Final Judgment would require this court to ad-
`judicate the issue of notice as to the defendants in ongoing
`consolidated cases, which are not parties to Microsoft’s de-
`claratory judgment action, the entire appeal as presented
`is not from a final decision within the scope of 28 U.S.C.
`§ 1295(a)(1). Therefore, we affirm the district court’s deci-
`sion only to the extent it held that Iron Oak did not provide
`sufficient notice under 35 U.S.C. § 287 to Microsoft. But to
`the extent the district court’s final judgment purports to
`extend beyond the only defendant in this case, Microsoft,
`and to the sufficiency of notice under § 287 to defendants
`outside of this case, we do not have jurisdiction.
`I
`In 2016 and 2017, Iron Oak sued various laptop, tablet,
`and mobile device manufacturers (hereinafter, the Manu-
`facturers and the Manufacturer Suits), alleging that the
`Manufacturers’ products and services infringed two of Iron
`Oak’s patents.1 According to Microsoft, the lawsuits
`
`1 These cases, consolidated in the Northern District of
`Texas, are: Fujitsu America, Inc., Civil Action No. 3:16-cv-
`3319; Toshiba America Information Systems Inc., Civil Ac-
`tion No. 3:16-cv-3320; Asustek Computer Inc., Civil Action
`No. 3:16-cv-3322; Samsung Electronics America, Inc., Ltd.,
`Civil Action No. 3:17-cv-1259; Sharp Electronics Corp.,
`Civil Action No. 3:17-cv-2699; Lenovo (U.S.) Inc., Civil Ac-
`tion No. 3:18-cv-1539; Dell Inc., Civil Action No. 3:18-cv-
`1542; and Acer America Corp., Civil Action No. 3:18-cv-
`1543.
`
`

`

`Case: 19-1802 Document: 53 Page: 3 Filed: 06/08/2020
`
`IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
`
`3
`
`implicated Microsoft software and products installed on
`the manufacturers’ devices, and so 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” pa-
`tents at issue (hereinafter, the Microsoft Action). Iron Oak
`Technologies, LLC v. Microsoft Corp., Civil Action No. 3:18-
`cv-00222-M, slip op. at 3 (N.D. Tex. Dec. 14, 2018) (Partial
`Summary Judgment Order). Soon after, the Microsoft Ac-
`tion and the Manufacturer Suits were consolidated in the
`Northern District of Texas. Microsoft then moved for sum-
`mary judgment in the Manufacturer Suits and the Mi-
`crosoft Action, arguing that Iron Oak “did not provide
`notice to any Defendant [in the Manufacturer Suits] that a
`Microsoft product was alleged to infringe” and that there-
`fore Iron Oak “cannot recover damages from the Defend-
`ants [in the Manufacturer Suits2] for infringement by the
`use of Microsoft products.” Partial Summary Judgment
`Order at 1−2 (footnote omitted). The district court granted
`Microsoft’s motion, holding that Iron Oak “may not recover
`damages from the Defendants [in the Manufacturer Suits]
`for infringement by Microsoft products or services” and
`
`2 Microsoft is not included in the district court’s defini-
`tion of Defendants in the Partial Summary Judgment Or-
`der. Partial Summary Judgment Order at 1, n.2. (“As used
`herein, ‘the Defendants’ means all Defendants sued by
`Plaintiff, which does not include Microsoft.”). Nor should
`it be, considering that it is undisputed that there were no
`infringement claims pending against Microsoft at the time
`of the summary judgment order. Appellee’s Supp. Br. 3
`(“When Iron Oak subsequently abandoned any claim for
`‘damages from Microsoft’ directly, [J.A. 5], Iron Oak’s in-
`fringement claims against Microsoft customers for infringe-
`ment by Microsoft software became all that remained in
`dispute in the declaratory judgment action.” (emphasis
`added)).
`
`

`

`Case: 19-1802 Document: 53 Page: 4 Filed: 06/08/2020
`
`4
`
`IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
`
`dismissed Microsoft’s declaratory judgment claims as
`moot. Id. at 9−10. The district court entered identical sum-
`mary judgment orders in the Microsoft Action and each of
`the Manufacturer Suits. After denying Iron Oak’s motion
`for reconsideration, but providing some clarification on its
`order, the district court ultimately entered an Agreed Final
`Judgment in the Microsoft Action confirming that Mi-
`crosoft’s summary judgment was granted and that, as a re-
`sult, Microsoft’s declaratory judgment claims and Iron
`Oak’s infringement counterclaims were dismissed as moot.
`Iron Oak Techs., LLC v. Microsoft Corp., Civil Action
`No. 3:18-cv-00222-M (N.D. Tex. Feb. 19, 2019) (Agreed Fi-
`nal Judgment).
`Iron Oak now appeals, arguing that the district court
`applied the incorrect standard under 35 U.S.C. § 287 in de-
`termining that Iron Oak’s pre-suit notice letters to the
`Manufacturers did not provide sufficient notice regarding
`infringement by Microsoft products and services on the
`Manufacturers’ devices.
`
`II
`Under 28 U.S.C. § 1295(a)(1), we have jurisdiction only
`over an appeal from a district court’s final decision. And
`“[e]ven though the parties have raised no objection to our
`jurisdiction over this appeal, we are obligated to consider
`whether there is a final judgment of the district court.”
`Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354,
`1362 (Fed. Cir. 2003). A final decision is one which “ends
`the litigation on the merits and leaves nothing for the court
`to do but execute the judgment.” Catlin v. United States,
`324 U.S. 229, 233 (1945). The final judgment rule is not
`merely a technicality; it “exists to prevent the piecemeal
`litigation of issues that practically constitute a single con-
`troversy, which as separate appeals would otherwise frus-
`trate efficient judicial administration.” Enzo Biochem, Inc.
`v. Gen-Probe Inc., 414 F.3d 1376, 1378 (Fed. Cir. 2005),
`
`

`

`Case: 19-1802 Document: 53 Page: 5 Filed: 06/08/2020
`
`IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
`
`5
`
`mandate recalled and dismissal vacated, 143 F. App’x 350
`(Fed. Cir. 2005).
`The procedural posture of this case is unconventional.
`The only underlying case on appeal—the Microsoft Ac-
`tion—includes only Iron Oak and Microsoft. Yet the brief-
`ing focuses entirely on whether the notice letters Iron Oak
`sent to the Manufacturers, not Microsoft, were sufficient
`under 35 U.S.C. § 287 as to Microsoft products and services
`installed on the Manufacturers’ laptops and tablets. To be
`clear, Iron Oak never sent any notice letter to Microsoft be-
`fore the patents-at-issue expired, Iron Oak does not seek
`damages from Microsoft, Microsoft is not a defendant in the
`Manufacturer Suits as defined in the district court’s deci-
`sion,3 and the Manufacturers were not parties to the Mi-
`crosoft Action below and are not here on appeal to defend
`it. We therefore do not, and indeed cannot, entertain any
`challenge to the summary judgments entered in the Man-
`ufacturer Suits because, as the parties concede, those cases
`remain ongoing as to the Manufacturers’ infringement lia-
`bility and the sufficiency of notice under § 287 for non-Mi-
`crosoft products and
`services
`installed
`on
`the
`manufacturers’ devices. See, e.g., Appellee’s Supp. Br. 6;
`Appellant’s Br. 15 n.4; Oral Arg. at 33:00−34:30, available
`at
`http://oralarguments.cafc.uscourts.gov/de-
`fault.aspx?fl=2019-1802.mp3. The only judgment that
`would be final for purposes of our review is as to Microsoft.
`We therefore affirm the district court’s decision only in-
`sofar as it held that Iron Oak did not provide sufficient no-
`tice under 35 U.S.C. § 287 to Microsoft that Microsoft’s
`
`3 Microsoft did intervene in at least one case—Iron
`Oak’s suit against Dell—to seek a declaration of nonin-
`fringement, and Iron Oak counterclaimed: Dell Inc., Civil
`Action No. 3:18-cv-1542 (prior to transfer, the case was Dell
`Inc., Civil Action No. 1:17-cv-00999 (W.D. Tex.); see also
`J.A. 212─228.
`
`

`

`Case: 19-1802 Document: 53 Page: 6 Filed: 06/08/2020
`
`6
`
`IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
`
`products infringe the patents at issue. But to the extent
`the district court’s final judgment purports to extend be-
`yond the only party to this case, Microsoft, and to the suf-
`ficiency of notice to defendants outside of this case, the
`judgment is not final. We take no position on the district
`court’s conclusion on the sufficiency of notice provided to
`the defendant Manufacturers in the Manufacturer Suits
`because we do not have jurisdiction over that question
`while the Manufacturer Suits are still pending.
`In their supplemental briefs, both parties argue that
`the district court simply, as is typical, “grant[ed] summary
`judgment for a nonmovant” after providing “notice and a
`reasonable time to respond.” Fed. R. Civ. P. 56(f). But
`again, the summary judgments entered for the non-
`movants—here, the Manufacturers in the Manufacturer
`Suits—are not final and not on appeal.
`This case is also unlike the typical one where a supplier
`or manufacturer seeks a declaration of noninfringement
`through declaratory judgment because of allegations
`against its customers. In the typical case, the product sup-
`plier or manufacturer seeks a declaration of noninfringe-
`ment as to its product or process—not the product or
`process of its customers. See, e.g., Arris Grp., Inc. v. British
`Telecommc’ns PLC, 639 F.3d 1368, 1371 (Fed. Cir. 2011)
`(explaining that Arris, a supplier/manufacturer, sued a pa-
`tent holder “seeking a declaratory judgment that . . . [the
`patents] are invalid and not infringed by Arris” (emphasis
`added)). The suit is not brought on behalf of the customer
`and the decision does not require the court to consider ac-
`tions taken by or in relation to the customer. But here the
`summary judgment required the district court to consider
`the notice letters and claim charts sent to the Manufactur-
`ers, which though similar in some respects, were ulti-
`mately specific to each Manufacturer. Compare J.A. 97,
`with J.A. 145.
`
`

`

`Case: 19-1802 Document: 53 Page: 7 Filed: 06/08/2020
`
`IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
`
`7
`
`Microsoft also argues in its supplemental briefing that
`because it has indemnity agreements with the manufactur-
`ers, it has “standing to sue for a declaration of non-infringe-
`ment by Microsoft customers accused by reason of their use
`of Microsoft products or services.” Appellee’s Supp. Br. 3.
`First, Microsoft cites Arris Group, 639 F.3d at 1375, and
`ABB Inc. v. Cooper Industries, LLC, 635 F.3d 1345, 1349
`(Fed. Cir. 2011), to support this proposition. In both cases,
`the declaratory judgment preceded any infringement suit
`against a customer or indemnitee. In that scenario it
`makes sense that an indemnitor would have standing to
`file a declaratory action to “determin[e] whether it would
`be liable for indemnification” without waiting for suits to
`be filed. ABB Inc., 635 F.3d at 1349. But here, the Manu-
`facturer Suits were ongoing before Microsoft filed its de-
`claratory judgment action. Therefore, “Microsoft could
`defend its customers and efficiently and effectively partici-
`pate in the [Manufacturer Suits].” Microsoft Corp. v.
`DataTern, Inc., 755 F.3d 899, 904 (Fed. Cir. 2014).
`Second, the record is largely devoid of the contours of
`Microsoft’s indemnity agreements. They are only men-
`tioned in passing in the district court’s summary judgment
`opinion. Partial Summary Judgment Order at 5 n.4 (“Mi-
`crosoft is involved in this litigation because Microsoft and
`Defendants have indemnity agreements in place that allow
`Defendants to recover from Microsoft if Defendants are re-
`quired to pay damages for infringement by a Microsoft
`product.”). We do not know to what extent, if any, Mi-
`crosoft is obligated to defend the Manufacturers under
`their agreements and therefore to what extent Microsoft
`may “stand in their shoes.”
`
`

`

`Case: 19-1802 Document: 53 Page: 8 Filed: 06/08/2020
`
`8
`
`IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
`
`We therefore affirm-in-part and dismiss-in-part for
`lack of jurisdiction.4
`AFFIRMED-IN-PART AND DISMISSED-IN-PART
`No costs.
`
`
`4 In their supplemental letter briefs, both parties note
`that this jurisdictional defect may potentially be cured
`through subsequent action in the district court. We leave
`that decision to the parties and to the discretion of the dis-
`trict court. We note, however, that if the parties elect to
`pursue certification under 28 U.S.C. § 1292(b) regarding
`the sufficiency of notice provided to the defendants in the
`Manufacturer Suits and if that request is ultimately
`granted by the district court and this court, we may con-
`sider whether further briefing and argument would be re-
`quired as the issue has been developed in briefs already
`filed and in the March 4, 2020 oral argument.
`
`