NOTE: This order is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

MISCELLANEOUS DOCKET NO. 879 

SKY TECHNOLOGIES LLC, 

 Plaintiff-Respondent, 

v. 

SAP AG and SAP AMERICA, INC., 

 Defendants-Petitioners. 

On Petition for Permission to Appeal pursuant to 28 U.S.C. § 1292(b) 

from the United States District Court for the Eastern District of Texas in 

case no. 2:06-CV-440, Judge David Folsom. 

ON PETITION FOR PERMISSION TO APPEAL 

Before RADER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and SCHALL, Circuit 

Judge.

SCHALL, Circuit Judge. 

O R D E R

SAP AG and SAP America, Inc. (SAP) petition for permission to appeal an order 

certified by the United States District Court for the Eastern District of Texas as one 

involving a controlling issue of law as to which there is substantial ground for difference 

of opinion and for which an immediate appeal may materially advance the ultimate 

termination of the litigation. SAP also moves to stay proceedings in the Texas district 

court, pending disposition of this petition by this court. Sky Technologies LLC opposes. 

Sky filed this patent infringement suit against SAP in the Eastern District of 

Texas. SAP moved to dismiss the suit and alleged that Sky lacked standing. SAP 

alleged that there was no written assignment agreement to Cross Atlantic Capital 

Partners (XACP) when XACP purchased patents in a foreclosure sale involving patents 
owned by Ozro, Inc., and thus XACP could not in turn ultimately assign its interests to 

Sky. Citing this court’s recent decision in Akazawa v. New Link Technology 

International, Inc., 520 F.3d 1354 (Fed. Cir. 2008), the Texas district court denied the 

motion to dismiss and held that under state law title of the patent transferred by 

operation of law and no written assignment was needed. Meanwhile, in the United 

States District Court for the District of Massachusetts, SAP sued the entities that owned 

the patent before the foreclosure sale, seeking a declaratory judgment concerning who 

owns the patents and declaratory judgments of noninfringement, invalidity, and 

unenforceability. The Massachusetts district court denied a motion to transfer that case 

to the Texas district court. 

The Texas district court subsequently certified for permissive appeal its order 

denying SAP's motion to dismiss, stating that a substantial ground for difference of 

opinion may exist concerning whether a transfer of title through operation of law may 

apply in situations that do not involve heirs or probate law. In Akazawa v. Link New 

Tech. Int'l, Inc., 520 F.3d 1354 (Fed. Cir. 2008), we held ownership of a patent may be 

changed by operation of probate law. In Akazawa, we remanded for the district court to 

determine whether under Japanese law a patent was transferred to the estate, noting 

that pursuant to statute a patent may be granted to "the patentee, his heirs, or assigns." 

See 35 U.S.C. 154(a)(1). We noted that "there is nothing that limits assignment as the 

only means for transferring patent ownership. Indeed, the case law illustrates that 

ownership of a patent may be changed by operation of law." Akazawa, 520 F.3d at 

1356. In contrast, 35 U.S.C. § 261 requires that all assignments be in writing. 

Ultimately, this court must exercise its own discretion in deciding whether it will 

grant permission to appeal interlocutory orders certified by a trial court. See In re 

Convertible Rowing Exerciser Patent Litigation, 903 F.2d 822 (Fed. Cir. 1990); 28 

Misc. 879 - 2 - 
Misc. 879 - 3 - 

U.S.C. § 1292(d)(2) (“the Federal Circuit may, in its discretion, permit an appeal to be 

taken from such order”). We determine that granting the petition in these circumstances 

is warranted. 

Concerning SAP's request to stay proceedings in the Texas district court, we 

note that the Texas district court stated that if this court grants the petition for 

permission to appeal, it would consider staying its proceedings. We deem the better 

course is for the Texas district court to consider that issue in the first instance. 

Accordingly, 

 IT IS ORDERED THAT: 

(1) The petition for permission to appeal is granted. 

 (2) The request to stay proceedings in the Texas district court is denied 

without prejudice. 

 FOR THE COURT 

 Sept. 10, 2008 /s/ Alvin A. Schall 

 Date Alvin A. Schall 

 Circuit Judge 

cc: Paul S. Grewal, Esq. 

 Brian Melton, Esq. 

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