Opinions — Friday, August 28, 2026

In Entropic Communications, LLC v. DISH Network L.L.C., the court granted DISH Network L.L.C. and DirecTV, LLC's unopposed motion to voluntarily dismiss Appeal Nos. 2026-1331 and 2026-1366, which arose from Patent Trial and Appeal Board decisions in IPR2024-00373 and IPR2024-01060, with each party to bear its own costs. The court deconsolidated Appeal Nos. 2026-1331, 2026-1366, and 2026-1352, lifted prior stays imposed by July 9, 2026 orders, and set a 60-day briefing deadline for Entropic's opening brief in the remaining Appeal No. 2026-1352.

The Federal Circuit transferred this appeal to the Fifth Circuit for lack of subject-matter jurisdiction. T-Mobile and KAIFI settled patent litigation over U.S. Patent No. 6,922,728, with T-Mobile agreeing to make an additional payment "if any Asserted Claim survives the EPR" that T-Mobile had initiated. After the PTO issued a Reexamination Certificate confirming several asserted claims as patentable without amendment, T-Mobile refused payment and sought a declaratory judgment that no claims "survived" the reexamination because KAIFI allegedly altered claim scope through inconsistent claim construction positions and committed inequitable conduct by failing to disclose those positions to the PTO. The district court granted summary judgment to KAIFI on its breach-of-contract counterclaim, holding that "survives the EPR" unambiguously meant claims confirmed as patentable in the Reexamination Certificate. Applying the four-part Gunn v. Minton test to determine whether this state-law contract dispute necessarily raised a substantial federal patent question, the Federal Circuit held it did not because the breach-of-contract claim could be resolved—as the district court did—by simply reviewing the Reexamination Certificate without addressing prosecution disclaimer or inequitable conduct.

The decision reaffirms strict limits on Federal Circuit jurisdiction over contract disputes involving patents where patent law issues appear only as potential defenses or alternative theories rather than necessary elements of the claim. The court rejected T-Mobile's analogy to Jang v. Boston Scientific Corp., distinguishing cases where infringement was logically antecedent to royalty disputes, and found that T-Mobile's inequitable conduct theory appeared to violate its covenant not to challenge patent enforceability under the settlement agreement itself. The court also declined KAIFI's invitation to find jurisdiction based on "survives" having specialized patent-law meaning, characterizing the Federal Circuit's use of that term in prior decisions as ordinary language rather than a term of art. The ruling clarifies that extrinsic evidence about negotiation history and commercial context cannot transform straightforward contract interpretation into a necessary patent-law question for jurisdictional purposes, particularly where the contract text itself contains no language requiring patent-law analysis.

The Federal Circuit affirmed the Eastern District of Texas's dismissal of AML IP, LLC's infringement suit against Bath & Body Works Direct, Inc. and The Buckle, Inc. concerning U.S. Patent No. 6,876,979, which relates to e-commerce methods using a "bridge computer." The district court had granted defendants' motions to dismiss under both Rule 12(b)(3) for improper venue under 28 U.S.C. § 1400(b) and Rule 12(b)(6) for failure to state a claim based on patent ineligibility under 35 U.S.C. § 101. On appeal, AML did not challenge the merits of either dismissal ground but argued the district court erred by reaching the § 101 issue after already concluding venue was improper. Applying Fifth Circuit law to this non-patent-specific docket management question and reviewing for abuse of discretion, the court held that the district court acted within its discretion in deciding both grounds simultaneously, distinguishing improper venue from subject matter jurisdiction, which is non-waivable and would preclude further rulings.

The decision addresses whether district courts retain discretion to decide merits-based dismissal grounds after finding improper venue, a question that appears infrequently litigated compared to the analogous subject matter jurisdiction scenario where courts routinely stop after finding jurisdiction lacking. The Federal Circuit emphasized that venue, unlike subject matter jurisdiction, is a waivable personal privilege rather than a limitation on judicial power, permitting courts to address concurrent Rule 12(b) grounds even after determining venue is improper. The court found judicial economy favored the district court's approach, as deciding both grounds enabled appellate review in a single proceeding and avoided piecemeal appeals that would result if the venue dismissal were reversed on appeal and the § 101 issue decided only thereafter. The court also rejected AML's request for an advisory opinion on the preclusive effect of the dual-ground dismissal, reaffirming that preclusion questions must be resolved in subsequent litigation, not preemptively in the action generating the judgment.