The Eight Circuit Court of Appeals recently granted MPHJ’s motion to transfer the ongoing appeal involving the cease and desist letters sent by the Nebraska Attorney General to the Farney Daniels firm, directing the appeal to the Federal Circuit, which has exclusive jurisdiction over patent appeals. In the context of the ongoing debate as to whether courts should treat allegedly abusive patent-demand-letter practices as a consumer-protection issue or as a patent issue, the Eighth Circuit’s decision provides an interesting contrast to the Vermont Attorney General’s suit against MPHJ, in which a Vermont District Court Judge held — and was not disrupted on appeal to the Federal Circuit – that the Vermont AG’s unfair competition claims against MPHJ belong in state court (see our April 18, 2014 post).
The present decision arises from Activision TV’s July 2013 patent suit against Pinnacle Bancorp, Inc., a bank with charters in Nebraska, accusing Pinnacle of infringing Activision’s patents for digital signage systems (see our January 22, 2014 post for more background). Several days after the suit was filed, the Nebraska AG sent a cease and desist letter to Activision’s counsel, the Farney Daniels firm, demanding that it refrain from initiating any new patent infringement enforcement efforts within the State of Nebraska, pending investigation into whether the enforcement efforts run afoul of Nebraska’s consumer protection or deceptive trade practice law. In response, Activision added the Nebraska AG to the action and sought a preliminary injunction protecting it from the Nebraska AG’s letter. In January 2014, District of Nebraska Judge Bataillon granted the injunction, enjoining the Nebraska AG from enforcing the cease and desist order and concluding that the AG could not prevent Farney Daniels from representing Activision in connection with its Nebraska-based patent enforcement efforts. The Nebraska AG appealed the Activision preliminary injunction to the Eighth Circuit on the basis that the matter deals with consumer protection issues.
Third-party patent holder MPHJ — also a client of Farney Daniels, whose patent enforcement efforts would be affected by the Nebraska AG’s cease and desist order — moved to intervene in the district court litigation. Like Activision, MPHJ sought and was awarded a preliminary injunction against the Nebraska AG.
MPHJ also intervened in the Nebraska AG’s Eight Circuit appeal and moved to transfer the case to the Federal Circuit, arguing the appeal arises under federal patent laws and, as such, should be heard by the Federal Circuit. In a two-sentence Judgment, the Eight Circuit granted MPHJ’s motion, citing 28 U.S.C. Section 1631, which provides that an appeal filed with a court that lacks jurisdiction over the matter shall be transferred “to any other such court in which the action or appeal could have been brought at the time it was filed or noticed.”