by Dennis Crouch
I was researching my recent Brulotte / Kimble post and stumbled across a new decision from the Fourth Circuit ceding appellate jurisdiction to the Federal Circuit based upon a defendant's assertion of a patent misuse defense (in the form of a counterclaim) after being sued for breach of contract.
In Honeywell International Inc. v. OPTO Electronics Co., Ltd., --- F.4th ----, 2025 WL 1226294 (4th Cir. Apr. 29, 2025), the Fourth Circuit dismissed a cross-appeal in a patent licensing dispute, holding that the Federal Circuit has exclusive appellate jurisdiction when a party asserts a patent misuse counterclaim seeking patent unenforceability. The opinion, authored by my law school classmate Judge Jay Richardson, has to go through several levels of analysis to reach the endpoint. I dug into the briefs and found that Judge Richardson's decision is more his own creation than that of the parties - basing the decision on a theory not presented by either side. And, I think the court stretched the Supreme Court's Gunn v. Minton precedent perhaps a bit too tight.
The case is now pending in the Federal Circuit, and that court will certainly revisit its jurisdictional basis and will need to through some of the bumps and failings of the Fourth Circuit's decision. I think that there is some potential that the case will be ping-ponged back to the Fourth Circuit.
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