"AML therefore argues instead that, regardless of the district court’s power to reach the Rule 12(b)(6) eligibility ground after deeming venue improper, it nonetheless should have refrained from doing so . . . AML simply wants this court to confirm that the patent-ineligibility dismissal will not have preclusive effect."

"We reject AML’s request for what is essentially an advisory opinion on the preclusive effect that the district court’s judgment (and ours) might have in future cases. The usual rule is that “the precise [preclusive] effect of the judgment[] in [the instant] case will necessarily have to be decided in any . . . later action[] that may be brought.”"

"T-Mobile asserted several causes of action2 that relate to the interpretation of “survives the EPR.” In its first two causes of action, T-Mobile contended that for a patent claim to “survive” the reexamination, it must retain a claim scope sufficient to support KAIFI’s previously asserted infringement case against T-Mobile. In particular, T-Mobile alleged that (1) KAIFI impermissibly altered the claim scope from what it had staked out during the district court litigation by arguing for materially different claim construction positions before the Patent Office and (2) KAIFI’s inequitable conduct during the EPR (by failing to disclose to the Patent Office its prior inconsistent claim-construction positions taken in district court) rendered the claims unenforceable. In its remaining causes of action, T-Mobile alleged frustration of purpose and lack of mutual assent. KAIFI counterclaimed for breach of contract and sought to recover the EPR payment. The parties then filed cross-motions for summary judgment."

"In determining whether we have appellate jurisdiction over the appeal of a district court judgment in a diversity case, we “look to whether the four part Gunn test is met on the basis of the cause of action pled and the facts as they existed at the time the complaint or any compulsory counterclaim is filed” . . . AIFI’s counterclaim: breach of contract. The parties focus on the first and third Gunn requirements, contending that the state law breach of contract claim necessarily raises a substantial patent law issue . . . Focusing on KAIFI’s breach of contract counterclaim, we do not see how determining whether any of the asserted patent claims “survive[d] the EPR” necessarily raises a patent law issue . . . Looking at the text of the Settlement Agreement, we do not see support for T-Mobile’s particularized understanding of “survives” . . . A patent law question is not a “necessary element” of the breach of contract claim, which might well succeed on the theory that the term is being used in this contract in its ordinary-language sense as applied to the plain formal results of the EPR process."

1. Disagrees with Appellant that the Board misconstrued “multiplexed signals” and therefore affirms the not unpatentable determination; and
2. In contrast, agrees with Cross-Appellant that the Board's determination as to other claims constituted an APA violation.

"Beginning with the intrinsic evidence, the claim language, “multiplexed signals,” indicates it is signals that are being multiplexed, not paths. This contradicts Apple’s insistence that multiplexing occurs whenever multiple data paths are combined into a single path." (emphasis in original)

"Because the Board appears to have overlooked Smart Mobile’s motivation to combine arguments with respect to claim 1 – which Apple also relied on for claim 17 – instead erroneously finding Smart Mobile made no such arguments, we cannot reasonably discern the Board’s basis for siding with Apple . . . While the Board’s failure to discuss the bottlenecking issue “does not alone establish that the Board did not consider it” . . . here the non-existent discussion coupled with the Board’s incorrect statement that Smart Mobile did not respond to Apple’s explanation, leads us to question whether the Board did consider bottlenecking."

• vacates the claim construction for "request to provision" / "activate" and remands ("Read in light of the specification, claim 1’s “request to provision” and “activate” limitations jointly require the addition of new services and are not so broad as to include management of existing applications and services to which a client has already subscribed.");
• affirms the Board's application of the Bodart reference ("[T]here is substantial evidence in the form of expert testimony relied upon by the Board that (1) Bodart’s virtual assistant is a server utilized to provide a first (telephone) service to a first user, and (2) it would have been obvious to a skilled artisan that a telephone service provider would have been the first provider using the virtual "); and
• finds no APA violation in the claim construction ("The Board fully explained why it construed “utilized by” as not being limited to “a knowing and intentional use,” and pointed to the evidentiary basis for this determination, including the ’254 patent’s claim language, detailed description, and prosecution history.").

"VDPP implicitly agreed not to amend its complaint in exchange for Volkswagen’s consent to an extension of time for VDPP to respond to Volkswagen’s motion to dismiss . . . After securing the extension, VDPP presented its proposed amended complaint to the district court anyway with no justification . . . This alone would have provided a basis for the court’s denial of leave to amend. Setting this aside, the court also correctly rejected VDPP’s proposed amended complaint as futile because it too was subject to dismissal . . . VDPP sought pre-suit damages, VDPP had a burden to plead compliance with the notice provision of 35 U.S.C. § 287(a), including compliance by VDPP’s licensees . . . VDPP’s proposed amended complaint failed to meet its burden of showing compliance with 35 U.S.C. § 287."

"[T]he court reasonably determined that “[m]any of the positions VDPP took were frivolous and objectively unreasonable,” including seeking future damages and an injunction on an expired patent, seeking past damages despite an inability to allege patent marking, failing to disclose relevant settlement agreements, and prolonging litigation with false statements about the settlement agreements."

"Mr. Ramey filed notices of appeal on August 7, 2024 and August 13, 2024 . . . Both notices list only “Plaintiff VDPP, LLC” as an appellant and thus fail to specify Mr. Ramey as a party taking the appeal . . . The notices, therefore, give no indication that Mr. Ramey intended to be an appellant; rather, Mr. Ramey’s name serves only to identify a specific order that his client VDPP was appealing. Because this order held both VDPP and Mr. Ramey jointly and severally liable for Volkswagen’s attorney fees . . . it was not clear that Mr. Ramey was also appealing the order on his own behalf rather than merely representing his client . . . Having concluded that Mr. Ramey failed to timely appeal the district court’s sanctions order on his own behalf and that VDPP lacks standing to contest the sanctions for him, we dismiss this portion of the appeal for lack of jurisdiction."