Federal Circuit Dismisses Patent Owner’s Patent Appeal for Lack of Appellate Jurisdiction

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a per curiam decision today in Tramec Sloan LLC v. Surti, dismissing an appeal brought by patent owner Tarun N. Surti after finding it lacked jurisdiction to review the district court’s order. Chief Judge Moore and Circuit Judges Lourie and Hughes decided the case per curiam.

Tramec Sloan LLC manufactures the AeroFlap mudflap under the Fleet Engineers, Inc. brand, which it acquired through a 2018 asset sale that also led Fleet Engineers to change its name. Surti owns the U.S. Patent No. 8,146,949, which is reissued as Patent No. RE44,755, and previously litigated infringement claims against Fleet Engineers over earlier AeroFlap designs. In that prior case, the U.S. District Court for the Western District of Michigan found that Fleet Engineers failed to prove the ‘755 patent invalid, though a jury determined that certain Fleet Engineers products did not infringe the asserted claims. The CAFC affirmed that outcome in 2023 in Fleet Engineers, Inc. v. Mudguard Technologies, LLC.

Tramec Sloan developed a new AeroFlap design after that litigation to avoid the ‘755 patent. Despite the redesign, Surti filed a second infringement suit in the U.S. District Court for the Middle District of Tennessee, naming the now-defunct Fleet Engineers as the defendant. Tramec Sloan responded by filing a declaratory judgment action in the Western District of Michigan seeking findings of noninfringement and invalidity as to the ‘755 patent. Surti moved to dismiss the action or, alternatively, transfer venue to the Middle District of Tennessee. He argued that res judicata and collateral estoppel barred the declaratory judgment claim, that venue was improper in Michigan under 28 U.S.C. Section 1406(a), and that transfer was warranted under Section 1404(a) even if the venue was proper.

Judge Paul L. Maloney denied Surti’s motion, finding that res judicata did not apply because the new litigation involved a redesigned product distinct from the one previously litigated. The court further found venue proper in the Western District of Michigan under both the general and patent venue statutes because Tramec Sloan makes, sells, and distributes the AeroFlap there. It also concluded that the private and public interest factors under Section 1404(a) did not favor transfer to Tennessee. Surti then appealed to the CAFC, arguing that the district court erred both in declining to apply claim preclusion and in refusing to transfer the case.

The CAFC applies its own law, rather than that of the regional circuits, when assessing its appellate jurisdiction. Generally, that jurisdiction extends only to final decisions of district courts under 28 U.S.C. Sections 1291 and 1295(a)(1). The CAFC, quoted View Engineering, Inc. v. Robotic Vision Systems, Inc., which in turn quoted the Supreme Court’s decision in Catlin v. United States, explained that a final decision is “one which ends the litigation on the merits and leaves nothing for the court to do but execute the judgment.” Limited exceptions exist, including certified interlocutory appeals under Section 1292(b) and the narrow collateral order doctrine, which permits review of orders affecting rights that would otherwise be lost without immediate appeal.

The CAFC found none of these exceptions available to Surti, explaining that the denial of a motion to dismiss is “interlocutory and is not an appeal from a final decision,” as established in Aleut Tribe v. United States. Since the denial of a motion to transfer likewise does not end litigation on the merits, the CAFC held that such denials are equally interlocutory, relying on F.D.I.C. v. Maco Bancorp, Inc. The court added in a footnote that a denial of a transfer motion also fails to qualify for review under the collateral order doctrine. Jurisdiction under Section 1292(b) was similarly unavailable since Judge Maloney never certified the order for interlocutory appeal, a prerequisite under the statute.

The opinion acknowledged that review of a transfer denial may sometimes be sought through a mandamus petition, citing In re HTC Corp., but noted that Surti never filed one. The court construed his briefing liberally as potentially seeking such relief but found he failed to meet the burden required for mandamus, under which a petitioner must show that “his right to issuance of the writ is clear and indisputable,” citing Cheney v. U.S. District Court for D.C. The CAFC found the district court had correctly analyzed venue under 28 U.S.C. Sections 1391(b) and 1400 and had reasonably weighed the transfer factors under Section 1404(a), leaving no error sufficient to warrant mandamus relief.

The CAFC considered and rejected Surti’s remaining arguments before dismissing the appeal for lack of jurisdiction since the district court’s order was neither a final judgment nor otherwise appealable.

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Author: billperry