                         NOTE: This order is nonprecedential.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




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