Microsoft is seeking to transfer Motorola’s appeal of Judge Robart’s RAND ruling from the Federal Circuit to the Ninth Circuit. Specifically, last Thursday, Nov. 21, Microsoft filed in the Federal Circuit a motion to transfer to the Ninth Circuit and today, Nov. 25, Microsoft filed a companion motion to terminate Motorola’s appeal through a transfer to the Ninth Circuit. Recall that our prior blog post on Motorola’s appeal (and another prior blog post) discussed this appellate jurisdiction issue and speculated that, although the appeal of Microsoft’s contract action alone typically would go to the Ninth Circuit, the appeal might be brought to the Federal Circuit following its consolidation with Motorola’s patent action against Microsoft. Microsoft is now putting that to the test, arguing that consolidation did not change the contract character of its action, which remains an independent action. Our prior blog posts’ discuss the procedural posture of the actions and issue presented.
This is an interesting procedural issue, though not specific to standard essential patents. One may be tempted to use this approach–i.e., a separate action on just the RAND breach of contract/contract issue–to shop for appellate jurisdiction. But keep in mind a potential risk that such a license contract action on a standard essential patent without raising infringement or other patent challenges might lead to res judicata barring later attempts to argue that the standard essential patent is not valid, infringed or enforceable–see our prior post on Cummins v. TAS (Fed. Cir. Dec. 6, 2012).