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        NOTE: This disposition is nonprecedential.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.
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 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 Suits 2] 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)).
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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),
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 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.
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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.
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 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.”
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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.
