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Exploring the latest in intellectual property law
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Settlement dispute not arising under patent law doesn’t “survive” Federal Circuit jurisdiction

by | Sep 17, 2026 |

The US Court of Appeals for the Federal Circuit concluded that it lacked appellate jurisdiction over a contract dispute arising from a patent settlement agreement because resolving the dispute did not necessarily require deciding a substantial question of patent law. The Court transferred the appeal to the Fifth Circuit. T-Mobile US, Inc. v. KAIFI LLC, Case No. 25-1006 (Fed. Cir. Aug. 28, 2026) (Taranto, Schall, Chen, JJ.)

KAIFI sued T-Mobile in the US District Court for the Eastern District of Texas, alleging infringement of a patent directed to Wi-Fi calling technology. T-Mobile subsequently requested ex parte reexamination (EPR) of the patent. While the EPR remained pending, the parties settled the infringement action.

Under the settlement agreement, T-Mobile received a license to the patent, made an initial payment, and agreed to make an additional contingent payment if any “Asserted Claim survives the EPR.” The agreement defined the asserted claims as the patent claims KAIFI had accused T-Mobile of infringing and included a covenant by T-Mobile not to challenge the validity or enforceability of the licensed patents. Texas law governed the agreement.

The United States Patent & Trademark Office (USPTO) later issued a Reexamination Certificate confirming the patentability of multiple asserted claims without amendment. T-Mobile nevertheless declined to make the contingent payment and filed a declaratory judgment action. T-Mobile argued that a claim “survived” reexamination only if it retained sufficient scope to support KAIFI’s previously asserted infringement theory. T-Mobile also asserted frustration of purpose and lack of mutual assent. KAIFI counterclaimed for breach of contract.

The district court granted summary judgment for KAIFI, concluding that the settlement agreement was unambiguous and that an asserted claim “survives” an EPR if the USPTO confirms the claim as patentable in the Reexamination Certificate. The court ordered T-Mobile to make the additional payment under the agreement. T-Mobile appealed to the Federal Circuit.

The Federal Circuit independently considered its jurisdiction under 28 USC § 1295(a)(1). Because KAIFI’s breach of contract claim arose under state law, Federal Circuit jurisdiction depended on whether the claim fell within the “special and small category” of state-law claims satisfying the Supreme Court’s four-part test of Gunn v. Minton (2013). That test assesses whether a federal issue is:

  • Necessarily raised;
  • Actually disputed;
  • Substantial; and
  • Capable of resolution in federal court without disrupting the federal-state balance.

The Federal Circuit concluded that the first Gunn requirement was not satisfied because KAIFI could prevail on its contract claim without resolving any patent-law issue. One permissible interpretation of “survives the EPR” was its ordinary meaning, which is that an asserted claim survives when the USPTO confirms its patentability rather than cancels it. That interpretation required only consideration of the agreement and the Reexamination Certificate, not resolution of claim construction, prosecution disclaimer, inequitable conduct, or another issue of substantive patent law.

The Federal Circuit rejected T-Mobile’s argument that determining whether the claims “survived” necessarily required analyzing whether KAIFI altered the scope of the claims through positions taken during reexamination. The Court explained that T-Mobile’s theory was [...]

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APA compliant? Board’s use of invalidity basis not raised in IPR petition may be harmless

by and | Sep 17, 2026 |

The US Court of Appeals for the Federal Circuit concluded that the Patent Trial & Appeal Board’s use of a reference that was not urged by the petitioner in an inter partes review (IPR) petition was harmless since the Court agreed with the Board’s analysis and conclusion that all challenged claims were unpatentable as obvious on alternative grounds raised in the petition. Netlist, Inc. v. Micron Technology, Inc., Case No. 2024-1707 (Fed. Cir. Sept. 2, 2026) (Reyna, Linn, Stark, JJ.)

Netlist owns a patent directed to improving the performance and memory capacity of memory boards. The patent describes using buffers between a memory controller and memory devices. Those buffers contain data paths that can be selectively enabled during read and write operations. Samsung filed a petition for IPR challenging certain claims of the patent as obvious over the combination of two prior art patents, Ellsberry and Halbert. The Board instituted review and determined that Samsung met its burden to show that the challenged claims were obvious over Ellsberry alone or in combination with Halbert. Netlist appealed.

The Federal Circuit reviewed the Board’s decision for compliance with the Administrative Procedure Act (APA) and agreed with the Board’s technical review of the prior art in finding the challenged claims obvious. The APA requires that a Board decision identify the reasons and bases in the record for reaching its conclusions. In an IPR proceeding, this generally requires the Board to proceed in accordance or conformance with the challenge grounds presented in the IPR petition, and the Board may not “depart from the petition and institute a different IPR of its own design.” In the past, the Federal Circuit has found error where the Board held claims unpatentable based on grounds that were not urged by the IPR petitioner.

Netlist argued that even if the Board had substantial evidence to find that Ellsberry taught most limitations at issue, the Board erred by using a Netlist patent in its analysis to fill a gap in terms of a claimed limitation. The Board cited the Netlist patent for its teaching that an additional clock cycle could account for delay as data traveled through a buffer. Netlist argued that it was improper to use the Netlist patent to supply a teaching of a claim limitation when Samsung did not present this reference as an invalidity ground in its IPR petition. Netlist argued that the Board expanded the role of the Netlist patent from being mere evidence of general skill in the art to that of a prior art reference in violation of the APA restriction against departing from the petition to find claims invalid on grounds of “its own design.”

The Federal Circuit concluded that any potential error arising from the Board’s use of the Netlist patent was harmless since the Board found alternatively that Ellsbery alone without relying on the Netlist patent taught the limitations in the challenged claims.

Practice note: The decision leaves unresolved when the Board’s use of a reference not relied on in the [...]

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Fifth Circuit scrolls past Ninth Circuit “Server Test” for online copyright infringement

by | Sep 10, 2026 |

The US Court of Appeals for the Fifth Circuit rejected the Ninth Circuit’s “server test” for determining whether embedded online content infringes a copyright owner’s public display right and concluded that URLs are not categorically excluded from qualifying as copyright management information (CMI) under the Digital Millennium Copyright Act (DMCA). Emmerich Newspapers, Inc. v. Particle Media, Inc., Case No. 23-60550 (5th Cir. Aug. 27, 2026) (King, Higginson, Duncan, JJ.)

Emmerich Newspapers publishes local news content online. Particle Media operates NewsBreak, a news aggregation website and application that links to content from various publishers, including Emmerich. One NewsBreak feature, called Framed View, allowed users to view a live version of an Emmerich webpage within a frame appearing in the NewsBreak interface.

Emmerich sued Particle for copyright infringement, alleging that Framed View violated Emmerich’s exclusive right under 17 USC § 106(5) to publicly display its copyrighted content. Emmerich also asserted a DMCA claim, contending that its URLs constituted CMI and that Particle improperly removed or altered that information when Emmerich content appeared under NewsBreak URLs.

The district court granted summary judgment to Particle. Applying the Ninth Circuit’s server test, first articulated in Perfect 10 v. Amazon.com (2007), the district court concluded that Particle did not infringe Emmerich’s display right because Particle did not store copies of Emmerich’s content on its own servers and instead linked to content transmitted from Emmerich’s servers. The district court also concluded that URLs could not constitute CMI because they primarily function as internet addresses. The Fifth Circuit accepted an interlocutory appeal addressing whether the server test provides the proper standard for display-right infringement and whether URLs may constitute CMI.

The Fifth Circuit declined to adopt the server test. Under that test, an entity that does not store a copy of a work on its own server generally does not “display” the work even if the entity embeds or frames content stored elsewhere. The Court concluded that this approach improperly transforms the Copyright Act’s requirement that a work be “fixed” into a requirement that the alleged infringer possess a copy of the work. The statutory definition of “fixed,” the Court explained, does not impose such a possession requirement.

Instead, the Fifth Circuit focused on the statutory requirement that a public display involve transmitting the work. The Court explained that determining whether this “transmit requirement” is satisfied requires identifying where the transmission originates and whether the transmission was permitted.

Applying that framework to Framed View, the Fifth Circuit concluded that Particle did not itself transmit Emmerich’s content. The transmission originated from Emmerich’s server, while NewsBreak merely sent a request for that content. The Court also emphasized that Emmerich’s server could have rejected the request. Thus, although the Court rejected the server test’s doctrinal basis, it concluded that Particle’s use of Framed View did not violate Emmerich’s public display right.

The Fifth Circuit cautioned that its finding was limited to the circumstances before it, suggesting that the analysis might differ where a copyright owner lacks the technological ability to reject [...]

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No venue, no problem: Improper venue doesn’t bar district court from deciding validity challenge

by | Sep 10, 2026 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s dismissal on both improper venue and patent eligibility grounds, finding no abuse of discretion in the district court’s decision to decide a Rule 12 (b)(6) patent eligibility challenge after first determining that venue was improper. AML IP, LLC v. Bath & Body Works Direct, et al., Case No. 2025-1280 (Fed. Cir. Aug. 28, 2026) (Prost, Bryson, Reyna, JJ.)

AML IP sued Bath & Body Works Direct in the US District Court for the Eastern District of Texas, alleging infringement of a patent directed to e-commerce methods. The defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(3) for improper venue and Rule 12(b)(6) for failure to state a claim, arguing that the asserted patent claims were ineligible under 35 USC § 101. The district court first determined that AML had failed to establish proper venue under 28 USC § 1400(b), concluding that “[f]or this reason alone, the case should be dismissed.” It nevertheless proceeded to the defendants’ Rule 12(b)(6) arguments and concluded that the asserted claims were patent ineligible under § 101. AML appealed.

AML did not challenge the merits of either ruling. Instead, it argued that once the district court determined that venue was improper, it should have stopped and dismissed the case solely on that basis rather than addressing patent eligibility.

Because AML’s challenge concerned the district court’s docket-management authority (an issue not unique to patent law), the Federal Circuit applied Fifth Circuit law and reviewed the district court’s decision for abuse of discretion. The Federal Circuit emphasized that AML did not contend that the district court lacked authority to decide the Rule 12(b)(6) motions after finding venue improper. Rather, AML argued only that the district court should have declined to do so.

The Federal Circuit rejected AML’s reliance on cases stating that venue motions should receive “top priority.” Those cases, the Court explained, generally require a district court to address venue before proceeding to substantive matters, but they do not necessarily restrict what a district court may do after determining that venue is improper. The district court here complied with that principle by resolving venue first and even staying the litigation while the dismissal motions were pending.

The Federal Circuit also noted that the “top priority” principle is intended primarily to protect a party challenging venue from being forced to litigate substantive issues in an objectionable forum. Here however, it was AML – the plaintiff that had selected the Eastern District of Texas – that sought to invoke the priority principle, rather than the defendants that had challenged venue.

AML separately relied on district court decisions in which courts resolved venue motions without deciding pending merits motions. The Federal Circuit found those decisions distinguishable. They reflected the “common-sense principle” that district courts ordinarily should decide venue first when transfer may be appropriate so that the transferee court can resolve substantive issues. No transfer was at issue here. The district court dismissed for improper [...]

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Chemical structure, formula, and name support written description of pharmaceutical genus

by | Sep 10, 2026 | ,

The US Court of Appeals for the Federal Circuit affirmed that a patent’s specification provided adequate written description support for genus claims directed to crystalline cabozantinib (L)-malate salts because it disclosed structural features common to the claimed genus. Exelixis, Inc. v. MSN Laboratories Private Ltd., Case No. 25-1236 (Fed. Cir. Aug. 31, 2026) (Stoll, J.; Moore, C.J.; Moore, District J., sitting by designation).

Exelixis holds the New Drug Application for Cabometyx®, a cancer treatment containing cabozantinib (L)-malate. MSN sought US Food and Drug Administration approval to market a generic cabozantinib (L)-malate product. Exelixis asserted three related patents directed, respectively, to crystalline cabozantinib (L)-malate salts, pharmaceutical formulations containing those salts, and methods of treating cancer using the salts. The patents share a common specification. Exelixis also asserted a separate patent directed to cabozantinib (L)-malate compositions containing low levels of a genotoxic impurity. MSN sought FDA approval to market a generic cabozantinib (L) malate product.

MSN conceded infringement of the crystalline malate salt patents but argued that the asserted claims were invalid for lack of written description under 35 USC § 112(a). After a bench trial, the district court rejected that challenge. As to the low-impurity formulation patent, the district court found no infringement and concluded that MSN had failed to establish invalidity based on inherent obviousness. MSN appealed.

Addressing written description, the Federal Circuit applied the framework for genus claims set forth in its 2010 Ariad Pharmaceuticals. v. Eli Lilly & Co decision. A specification may demonstrate possession of a genus by disclosing either a representative number of species or structural features common to the genus that allow a skilled artisan to visualize or recognize its members.

The Federal Circuit found no clear error in the district court’s determination that the common specification adequately disclosed structural features of the claimed genus. In particular, the specification identified the chemical name and formula of cabozantinib (L)-malate and specified that the claimed salt had a crystalline structure. The claims were correspondingly limited to crystalline cabozantinib (L)-malate salts. The specification also disclosed processes for preparing crystalline and amorphous forms, although the Court noted that those disclosures were not dispositive of written description.

The Federal Circuit rejected MSN’s argument that the specification failed to describe the genus because different crystalline polymorphs could possess different properties, such as density, melting point, and solubility. The Court explained that those characteristics were not claimed and that MSN had not shown why differences in unclaimed properties undermined the district court’s finding that the specification identified structural features common to the claimed genus.

The Court therefore affirmed the district court’s determination that the crystalline malate salt claims satisfied the written description requirement.

The Federal Circuit separately addressed MSN’s appeal concerning the low-impurity formulation patent. The district court had found the asserted claim not infringed and not invalid, concluding that MSN failed to prove that the prior art inherently produced a formulation containing no more than the claimed level of a genotoxic impurity. Exelixis initially appealed the noninfringement ruling but later dismissed [...]

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Shared function sufficient for a proper Markush group

by | Sep 10, 2026 |

In a recently designated informative decision, the Patent Trial & Appeal Board reversed an examiner’s rejection of claims reciting structurally distinct microRNAs (miRNAs) as an improper Markush group. The Board found the claimed alternatives sufficiently related because they performed similar functions in the context of the invention. Ex parte Chowdhury, Appeal No. 2025-002261 (PTAB Feb. 5, 2026) (Flax, Katz, Hardman, A.P.JJ.) (designated informative Aug. 25, 2026).

The patent application at issue concerns methods for assessing and treating radiation-induced damage using levels of particular miRNAs in a patient’s serum. The claims recited groups of different miRNAs whose measured levels could be used to assess radiation damage and inform treatment decisions.

The examiner rejected the claims as containing improper Markush groupings. The examiner found that the recited miRNAs did not share substantial structural similarity because each had a different nucleotide sequence. Their only structural similarity was that each comprised nucleotides. The examiner also found that the miRNAs did not belong to a recognized chemical class that would have been expected to behave similarly or to be interchangeable for achieving the same result.

The Board reversed. It explained that a proper Markush group generally requires the listed alternatives to belong to a recognized physical or chemical class or to be sufficiently related by a common property or function. In assessing that requirement, however, the relevant inquiry is whether the alternatives are interchangeable for the purposes of the claimed invention.

The Board found that the claimed miRNAs satisfied that standard. Although the individual miRNAs were structurally different and did not necessarily perform the same biological function, the claims did not depend on those biological functions. Instead, each miRNA served the same claimed purpose: its serum level could be quantified and used as an indicator relevant to radiation-induced damage and treatment.

As the Board explained, the listed miRNAs did not need to function biologically in the same manner or produce the same biological result. They needed only to be quantifiable and interchangeable as markers for the purposes of the claimed method. Because the specification described the recited miRNAs as performing that common function, the Board found that they constituted a proper Markush grouping.



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Result-oriented claims fail to pass § 101 muster; industry standards may prove individual claim limitations

by | Sep 10, 2026 |

The US Court of Appeals for the Federal Circuit concluded that claims broadly directed to optimizing signal constellations for a particular result were patent ineligible, but upheld claims directed to specific constellations. The Court also confirmed that industry standards may be used on a limitation-by-limitation basis to prove infringement. Constellation Designs LLC v. LG Electronics Inc., et al., Case No. 24-1822 (Fed. Cir. Aug. 31, 2026) (Stoll, Lourie, JJ.; Oetken, District J., sitting by designation).

Constellation Designs sued LG for infringement of four patents directed to digital communication systems using signal constellations to transmit and decode data. Constellation accused LG televisions compatible with the ATSC 3.0 over-the-air television broadcast standard, specifically its A/322 protocol. The asserted claims fell into two groups: claims reciting geometrically spaced symbol constellations optimized for capacity using parallel decode (PD) capacity (optimization claims) and claims reciting specific non-uniform constellations (constellation claims).

The district court granted Constellation summary judgment that all asserted claims were patent eligible under 35 USC § 101. Following trial, a jury found that LG willfully infringed the asserted claims and awarded Constellation about $1.68 million in damages. The district court denied LG’s post-trial motions challenging infringement and damages, and entered an ongoing royalty of $6.75 per television. LG appealed.

Addressing patent eligibility, the Federal Circuit distinguished between the optimization claims and the constellation claims. At step one of the Alice framework, the Court concluded that the optimization claims were directed to the abstract idea of optimizing a constellation for PD capacity. The claims recited a desired result (improved capacity at a reduced signal-to-noise ratio) but did not recite how to achieve that result. The Court analogized the claims to the result-oriented claims found ineligible in other cases, explaining that the claims broadly covered essentially all ways of optimizing a constellation for PD capacity.

Although the specification described techniques for performing the optimization, the claims did not recite those details. The Federal Circuit explained that the § 101 inquiry focuses on the claim language and that technical details disclosed only in the specification cannot be imported into the claims to establish eligibility. At Alice step two, the Court found no inventive concept because Constellation’s alleged inventive concept (optimizing non-uniform constellations based on PD capacity) was the abstract idea itself. The Court therefore vacated the district court’s summary judgment of eligibility as to the optimization claims.

The Federal Circuit reached a different conclusion as to the constellation claims. Those claims did not broadly claim optimization but instead recited specific constellations developed using techniques described in the patents. The Court found that this distinction “makes all the difference” because the constellation claims recited a concrete implementation of a technological improvement directed to overcoming limitations in constellation capacity. The Court therefore affirmed the district court’s finding that those claims were patent eligible.

The Federal Circuit also affirmed the denial of LG’s motion for judgment as a matter of law of noninfringement. At trial, Constellation relied on the ATSC 3.0/A/322 standard to establish that the accused device met [...]

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Settlement wipes out exceptional-case fee award in exceptional fashion

by | Sep 3, 2026 |

The US Court of Appeals for the Third Circuit granted the parties’ joint motion to vacate a district court’s attorneys’ fee rulings after the parties settled while the second fee appeal was pending. The Court concluded that the case presented the rare “exceptional circumstances” warranting vacatur after mootness resulting from settlement. Lontex Corp. v. Nike, Inc., Case Nos. 24-3284; -3358 (3d Cir. Aug. 20, 2026) (Chagares, C.J.; Freeman, Bove, JJ.)

The appeals arose from fee proceedings following the Third Circuit’s earlier decision in Lontex v. Nike (2024). There, the Court addressed the standard for determining whether a trademark case is “exceptional” for purposes of awarding attorneys’ fees and remanded for further proceedings. On remand, the district court again found the case exceptional and awarded Lontex attorneys’ fees and costs. Nike appealed, and Lontex cross-appealed.

After oral argument and mediation, the parties settled and jointly sought vacatur of the district court’s fee rulings. The Third Circuit emphasized that settlement alone does not warrant vacatur. Because judicial decisions are presumptively correct and may have value beyond the immediate parties, vacatur following settlement remains an extraordinary equitable remedy requiring exceptional circumstances.

The Third Circuit found such exceptional circumstances in this case. Most importantly, the challenged decisions applied the legal standard established in the Third Circuit’s precedential 2024 decision in the case, which remains intact. The public therefore retained the benefit of the appellate decision establishing the governing legal principles, reducing the public interest in preserving the district court’s application of those principles on remand. Both parties also challenged the district court’s rulings, and the settlement (reached following court-encouraged mediation) conserved further judicial resources.

Balancing those considerations, the Third Circuit concluded that the benefits of settlement outweighed the remaining public interest in preserving the district court’s rulings. The case therefore presented the unusual circumstances in which vacatur following settlement is appropriate.



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Now you know the limits on patent rights: Diversion of resources doesn’t establish standing

by | Sep 3, 2026 |

Concluding that an organization cannot establish standing to seek prospective relief merely by alleging that it diverted resources in response to challenged conduct, the US Court of Appeals for the Federal Circuit affirmed dismissal of claims brought by inventor-advocacy organizations challenging language on the cover of issued patents because the organizations lacked both organizational and associational standing. US Inventor, Inc. v. Squires, Case No. 24-2378 (Fed. Cir. Aug. 21, 2026) (Moore, Cunningham, Kovner (sitting by designation), JJ.)

The cover of each newly issued patent includes language tracking the Patent Act, stating that the patent “grants to the persons having title to this patent the right to exclude others from making, using, offering for sale, or selling” the invention throughout the United States or importing the invention into the US. Three inventor advocacy organizations – US Inventor, Inventors Association of South Central Kansas, and Inventors Network of Minnesota – sued the United States Patent and Trademark Office (USPTO) and its acting director, alleging that this language was misleading in light of the Supreme Court’s 2006 decision in eBay v. MercExchange.

Plaintiffs contended that eBay eliminated any absolute right of a patent owner to exclude others because injunctive relief is no longer automatic upon a finding of infringement. They sought an order requiring the USPTO to change the patent cover language, an injunction prohibiting the USPTO from representing that patent owners possess an unequivocal right to exclude, and a declaration that the existing language is unlawful. The district court dismissed the complaint for lack of standing. Plaintiffs appealed.

The Federal Circuit affirmed, concluding that plaintiffs had not adequately alleged a real and immediate threat of future injury sufficient to support prospective injunctive or declaratory relief.

First, the Federal Circuit concluded that plaintiffs lacked organizational standing. An organization suing on its own behalf must satisfy the ordinary requirements of Article III standing, including demonstrating a concrete and imminent threat of future injury. Relying on the Supreme Court’s 2024 decision in FDA v. Alliance for Hippocratic Medicine, the Court explained that an organization does not suffer a cognizable injury merely because challenged conduct causes it to spend additional “time, energy, and resources on advocacy and education.”

Plaintiffs relied on a similar diversion-of-resources theory, alleging that the USPTO’s patent cover language required them to devote resources to educating inventors about the effect of eBay, thereby impairing their ability to pursue their organizational missions. The Federal Circuit found those allegations insufficient.

The Federal Circuit also rejected plaintiffs’ reliance on the Supreme Court’s 1982 decision in Havens Realty v. Coleman. In Havens, the challenged conduct directly interfered with the organization’s core activities because racial steering practices caused the organization to receive false housing information that it then passed along to home seekers. Here, by contrast, plaintiffs were aware of eBay and therefore were not themselves misled by the patent cover language. Their alleged injury instead arose from their decision to educate unidentified inventors who might misunderstand that language. Rather than alleging that the USPTO directly impeded their [...]

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Floored: Rule 41(a)(2) dismissal supports appellate jurisdiction

by | Sep 3, 2026 |

The US Court of Appeals for the Fifth Circuit affirmed dismissal of a plaintiff’s Digital Millennium Copyright Act (DMCA) claims while vacating dismissal of its copyright infringement claims involving architectural floorplans, concluding that the Court had appellate jurisdiction despite the plaintiff’s voluntary dismissal under Fed. R. Civ. P. 41(a)(2). Kipp Flores Architects, LLC v. AMH Creekside Development, LLC, Case No. 23-50750 (5th Cir. Aug. 21, 2026) (Willett, J.) (Haynes, J., concurring) (Oldham, J., dissenting).

Kipp Flores Architects (KFA) owned copyrights in architectural building plans and technical drawings that it licensed to defendants for use in constructing buildings. The licenses required defendants to include specified copyright management information (CMI) when displaying the copyrighted works. KFA and defendant American Housing Ventures (AHV) later worked with other companies to develop floorplans and technical documents for AHV’s construction projects. Those documents did not contain the required CMI. AHV subsequently provided the floorplans to the remaining defendants for use in developing another building, and those defendants used the floorplans, still without CMI, in online marketing materials.

KFA asserted claims for DMCA violations, copyright infringement, conversion, and specific performance. The district court dismissed all of KFA’s DMCA and conversion claims, along with some of its remaining claims against certain defendants. Seeking to appeal the dismissals, KFA moved under Rule 41(a)(2) to voluntarily dismiss its remaining claims, and the district court granted the motion. KFA then appealed.

The Fifth Circuit first considered whether the Rule 41(a)(2) dismissal created an appealable final judgment. Rule 41(a) permits dismissal of an action, not individual claims. The Court nevertheless concluded that the district court’s error in permitting dismissal of KFA’s remaining claims did not deprive the Fifth Circuit of appellate jurisdiction. The error was a “reversible error, not an unappealable nullity.”

The Fifth Circuit also distinguished its precedent involving Rule 41(a)(1). Unlike a Rule 41(a)(1) dismissal, which is self-effectuating, a Rule 41(a)(2) dismissal requires a court order. The district court’s order granting KFA’s motion therefore constituted a “legally operative act of dismissal” sufficient to create appellate jurisdiction.

Turning to the merits, the Fifth Circuit addressed KFA’s copyright infringement and DMCA claims. The Architectural Works Copyright Protection Act (AWCPA) protects architectural works while earlier copyright law separately protected architectural plans as pictorial, graphic, or sculptural (PGS) works. Section 120(a) of the Copyright Act creates a safe harbor for pictures or other pictorial representations of architectural works embodied in buildings located in or ordinarily visible from a public place. Although § 120(a) does not apply to rights arising solely from PGS works, the Court concluded that KFA’s floorplans could fall within the safe harbor as far as they depicted copyrighted architectural works. The Court also concluded that § 120(a) can apply to representations created before a building becomes publicly visible but distributed or displayed afterward.

The Fifth Circuit nevertheless determined that the district court erred in dismissing KFA’s infringement claim under § 120(a). KFA was not required to plead facts negating the safe harbor because § 120(a) operates as an affirmative defense. KFA’s [...]

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