## Facts

- SkyHawke Technologies, LLC owned U.S. Patent No. 7,118,498 covering electronic golf-distance and course-data technology.
- SkyHawke sued DECA International Corp. in the Southern District of Mississippi for patent infringement, alleging DECA sold accused products into Mississippi.
- DECA moved to transfer the infringement case to the Central District of California under 28 U.S.C. § 1404(a); the Mississippi court denied transfer.
- At DECA’s request, the USPTO instituted inter partes reexamination of the ’498 patent; the district court stayed the infringement case pending completion of reexamination.
- The examiner initially rejected claims on obviousness grounds but later confirmed the patentability of all claims; the PTAB affirmed, including analysis of a means-plus-function “means … for determining a distance” limitation by identifying algorithms in the specification as corresponding structure.
- Although it prevailed at the PTAB, SkyHawke appealed to the Federal Circuit seeking to change the Board’s claim construction; DECA cross-appealed and moved to dismiss SkyHawke’s appeal for lack of appellate jurisdiction.

## Issues

1. Whether a party that prevailed before the PTAB may appeal solely to modify claim construction or reasoning while preserving the favorable judgment on patentability.
2. Whether concerns about potential future reliance on the PTAB’s claim construction in stayed district-court litigation create a sufficient basis to permit a prevailing-party appeal.

## Decision

- The Federal Circuit granted DECA’s motion and dismissed SkyHawke’s appeal.
- The court applied the prudential rule that a prevailing party ordinarily may not seek appellate relief from a favorable judgment.
- The court rejected SkyHawke’s asserted exception based on feared future harm in district court, concluding any injury was speculative and could be addressed if and when an adverse district-court claim construction occurred.
- The PTAB’s confirmation of patentability remained in place, and the district court was left to address claim construction in the infringement case upon resumption.

## Legal Principles

- A prevailing party generally cannot appeal because it has received all relief available from the tribunal; appellate review is not available merely to correct reasoning or claim construction absent an adverse judgment.
- Speculative future effects of an agency’s reasoning in later litigation do not justify a prevailing-party appeal; the proper time to seek review is after an adverse, reviewable decision in the later proceeding.
- In means-plus-function analysis under 35 U.S.C. § 112, corresponding structure may require identification of specific algorithms in the specification, and unpatentability over prior art requires the prior art to disclose the same or equivalent algorithmic structure for the claimed function.
- On a motion to transfer under 28 U.S.C. § 1404(a), a plaintiff’s choice of forum and the forum’s connection to relevant conduct and evidence may outweigh asserted convenience and time-to-trial differences where the movant fails to show the balance strongly favors transfer.

## Conclusion

The Federal Circuit dismissed a patent owner’s attempt to appeal from a PTAB decision upholding its claims, holding that a prevailing party cannot appeal merely to alter claim construction based on speculative future litigation effects, while related district-court proceedings remained the proper forum for resolving any later claim-construction dispute.


SkyHawke Techs., LLC v. DECA Int’l Corp., Nos. 2016-1325, 2016-1326 (Fed. Cir. 2016)