An Ordinary Word: T-Mobile v. KAIFI and What Counts as a Patent Case

by Dennis Crouch

I wrote about T-Mobile v. KAIFI back in May 2026 following oral arguments where the court spent most of the time on one question: does the Federal Circuit have jurisdiction over this appeal?

The answer, we now know, is no.  Judge Chen, joined by Judges Taranto and Schall, held that a Texas breach of contract judgment that included a judgment on whether patent claims "survive" an ex parte reexamination does not arise under the patent laws. A companion nonprecedential order transfers the appeal to the Fifth Circuit.

The contract at issue was a settlement agreement. KAIFI had sued T-Mobile on its Wi-Fi calling U.S. Patent No. 6,922,728.  The parties settled days before trial, with T-Mobile taking a license, making an upfront payment, and promising a second payment if "any Asserted Claim survives the EPR" that T-Mobile itself had requested. The Patent Office then confirmed seven of the eight asserted claims without amendment. T-Mobile refused to pay, filed a diversity declaratory judgment action, and lost on summary judgment before Judge Gilstrap, who held the term unambiguous: a claim survives if the reexamination certificate confirms it. Both parties asked the Federal Circuit to decide the appeal. The panel declined, finding it lacked appellate jurisdiction, and then (oddly?) spent several pages explaining what it thinks the contract means.

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