Late last week, Judge Noreika denied a motion for interlocutory appeal of an denial of a motion to dismiss for lack of standing.
Security Interest Doesn't Prevent Suit After Debt Repaid
In moving to dismiss, defendant argued that the PTO assignment records show that the the patentee had assigned its patents to a lender as collateral and, after the debt was repaid, had never received an assignment back or any release of the security interest.
Plaintiff countered that the security interest was extinguished once the debt was repaid, regardless of any release or assignment specific to the patent. So no separate assignment back was needed.
Judge Noreika sided held that the judgment had been satisfied the security interest extinguished, so there was no standing issue.
No Interlocutory Appeal of a Contract Interpretation
When the defendant moved for the Court to certify an interlocutory appeal, the Court again denied. Defendant sought leave under 28 U.S.C. § 1292(b), which requires
a controlling question of law as to which there is substantial ground for difference of opinion . . . .
The Court held that because it's decision was partially fact-based, defendant cannot meet this requirement:
[A]lthough the Court did interpret portions of a 2009 agreement to determine whether it was a Patent Collateral Assignment as argued by Plaintiff, the Court did more than simply interpret a contract in reaching its conclusion. . . . The Court went further, noting that Plaintiff had offered evidence that the condition for reassignment of the Patents-in-Suit back to Arbor Company was satisfied. . . . This latter finding is more than contract interpretation – rather, it is an assessment of whether an obligation set forth in a contract has been performed (i.e., a mixed question of law and fact).
The Court also suggested that interpretation of a contract could never be the basis for an interlocutory appeal:
The Court likewise has some doubt that the first requirement of a § 1292(b) analysis would be satisfied even if the ruling at issue was based solely on contract interpretation. See, e.g., Ahrenholz v. Bd. of Trustees of Univ. of Illinois, 219 F.3d 674, 676 (7th Cir. 2000) (Posner, J.) (“We also think that . . . the question of the meaning of a contract, though technically a question of law when there is no other evidence but the written contract itself, is not what the framers of section 1292(b) had in mind either.”).
Note that Chief Judge Stark has previously held the opposite, at least in dicta. EMSI Acquisition, Inc. v. RSUI Indem. Co., C.A. No. 16-1046-LPS, 2018 U.S. Dist. LEXIS 85193, at *7 (D. Del. May 22, 2018) (contract interpretation is a "pure question of law" under § 1292(b)).
You're Not Likely to Get an Interlocutory Appeal Anyway
Regardless of Judge Stark's previous dicta, the ruling here probably does not come as a surprise to defendant. Contested requests for interlocutory appeal are almost never granted.
The only non-consent-based interlocutory appeal I know of was back in 2010, where the Court certified interlocutory appeal of a claim construction related to another case that was then on appeal (the Federal Circuit ultimately refused to accept that interlocutory appeal anyway). See St. Clair Intellectual Prop. Consultants, Inc. v. Samsung Elecs. Co., C.A. No. 04-1436-JJF-LPS, 2010 U.S. Dist. LEXIS 40628, at *21 (D. Del. Mar. 28, 2010).
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