Sweepstakes Patent Company v. Burns

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SWEEPSTAKES PATENT COMPANY, LLC,
Plaintiff-Appellant
INGENIO, FILIALE DE LOTO-QUEBEC INC.,
Plaintiff
v.
CHASE BURNS, INTERNATIONAL INTERNET
TECHNOLOGIES, LLC, ALLIED VETERANS OF
THE WORLD, INC., AND AFFILIATES, ALLIED
VETERANS MANAGEMENT GROUP, INC.,
JOHNNY DUNCAN, JERRY BASS, JOHN M.
HESSONG, MICHAEL DAVIS,
Defendants-Appellees
______________________
2014-1851
______________________
Appeal from the United States District Court for the
Middle District of Florida in No. 6:14-cv-00151-ACC-KRS,
Judge Anne C. Conway.
______________________
Decided: April 20, 2015
______________________
2 SWEEPSTAKES PATENT COMPANY v. BURNS
JOEL B. ROTHMAN, Schneider Rothman IP Law Group,
Boca Raton, FL, argued for plaintiff-appellant. Also
represented by JEROLD I. SCHNEIDER.
STEPHEN D. MILBRATH, Allen, Dyer, Doppelt, Milbrath
& Gilchrist, P.A., Orlando, FL, argued for defendants-
appellees.
______________________
Before PROST, Chief Judge, CLEVENGER and SCHALL,
Circuit Judges.
PROST, Chief Judge.
Sweepstakes Patent Company, LLC (“SPC”) waived
its right to appeal the issue of whether the district court
should have applied Quebec Law. Thus, we affirm the
district court’s grant of the motion to dismiss for lack of
standing.
BACKGROUND
This case involves the invention of a new method and
system for playing an interactive lottery game. The
method was invented by Mr. Perry Kaye, who obtained
two patents covering his invention, U.S. Patent Nos.
5,569,082 and 5,709,603 (“patents”). On March 5, 1999,
Mr. Kaye sold the patents to Ingenio and Ingenio agreed
to license the patents back to Mr. Kaye’s company, Gizmo
Enterprises, Inc. (“Gizmo”) for use in two fields: charitable
lottery games and promotional games. The license
agreement included an applicable law section, which
contains a forum selection clause and a choice of law
clause, and detailed requirements for when Gizmo had to
receive Ingenio’s permission to file a patent infringement
suit. In August 2012, Gizmo assigned its rights under the
license agreement to SPC.
On January 29, 2014, SPC filed a lawsuit against
Chase Burns; International Internet Technologies, LLC;
SWEEPSTAKES PATENT COMPANY v. BURNS 3
Allied Veterans of the World, Inc.; et al. (“Defendants”) for
induced, direct, and contributory infringement of the
patents. In response, Defendants filed a motion to dis-
miss for lack of standing, or in the alternative a motion to
stay. SPC included Ingenio as a nominal plaintiff. Ingen-
io in turn filed a Rule 11 motion against SPC alleging that
SPC filed the complaint knowing that it did not have
standing, as SPC had not received written consent from
Ingenio as required by the license agreement. Following
Ingenio filing a Rule 11 motion, SPC filed a cross-claim
against Ingenio seeking a declaration that SPC had
standing to sue under the license agreement. In response,
Ingenio filed a motion to dismiss the cross claim for lack
of standing. The district court held a hearing on July 22,
2014 to address various motions, including the motions to
dismiss.
The district court granted both the Defendants’ and
Ingenio’s motions to dismiss, but denied as moot the
Defendants’ alternative motion to stay the case. The
district court additionally denied Ingenio’s motion for
Rule 11 sanctions. The district court’s decision to grant
the motions to dismiss was grounded in the fact that SPC
did not meet the standing requirements to bring a patent
suit. Specifically, the district court found that under the
plain language of the license agreement SPC had to
obtain Ingenio’s prior written consent to institute any
claim or legal proceeding relating to the patents. As SPC
failed to obtain Ingenio’s written consent, the district
court held that SPC lacked standing to bring the suit.
DISCUSSION
SPC argues that the district court improperly failed to
apply foreign law when the court interpreted the license
4 SWEEPSTAKES PATENT COMPANY v. BURNS
agreement. 1 The Defendants respond that the argument
was waived because SPC never raised this argument with
the district court. We agree with the Defendants.
Waiver is governed by local circuit law, in this case
the Eleventh Circuit. Innogenetics, N.V. v. Abbott Labs.,
512 F.3d 1363, n. 5 (Fed. Cir. 2008). Under Eleventh
Circuit case law, the doctrine of waiver prohibits parties
from raising new arguments on appeal that were not
raised at the district court. See, Mesa Air Grp. v. Delta
Air Lines, Inc., 573 F.3d 1124, 1128-29 (11th Cir. 2009)
(finding that where a party had failed to present a choice-
of-law issue to the trial court, the issue was waived on
appeal). Additionally, apart from Eleventh Circuit case
law, Federal Rule of Civil Procedure Rule 44.1 (“FRCP
44.1”), entitled Determining Foreign Law, reads in rele-
vant part, “A party who intends to raise an issue about a
foreign country’s law must give notice by a pleading or
other writing.”
SPC fails to provide any evidence that it preserved
the argument it now raises on appeal. First, SPC’s briefs
do not provide a single citation to the record that would
satisfy FRCP 44.1. While SPC argues that it put the
district court on notice because “[t]he District Court had
the License Agreement before it, reviewed it, and posed
the question during oral argument about whether the
District Court or a Court in Canada should interpret the
License Agreement since the License Agreement also had
a forum selection clause,” Reply Brief 2, this statement
does not satisfy the requirements of FRCP 44.1. FRCP
44.1 requires a pleading or a writing—simply attaching a
contract to a motion does not qualify as either a pleading
or a writing. Furthermore, the quoted language refers to
the forum selection clause, not the choice of law clause,
1 SPC makes no claim that the district court misin-
terpreted the contract under Florida law.
SWEEPSTAKES PATENT COMPANY v. BURNS 5
and thus fails to put the district court on notice as re-
quired by FRCP 44.1.
Second, at oral argument, SPC was asked repeatedly
to provide a citation to the record to where it preserved its
appeal. The one citation that SPC did eventually provide
the court was to a sentence in SPC’s Memorandum in
Opposition to Motion to Dismiss. Oral Arg. at 33:00,
available at http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2014-1851.mp3. The cited language
reads: “Furthermore, the issues raised on the Cross-Claim
are either not issues of Quebec law, or if Quebec law does
apply then this Court can easily construe Quebec Civil
law.” JA 1250. However, this single sentence also fails
to comply with FRCP 44.1 as it simply indicates that the
application of foreign law may be an issue, not that it is
an issue that should be addressed by the district court.
Third, and finally, SPC argues that the burden was on
the district court to inform the parties that it would
construe the contract under Florida law, rather than
Quebec law. This fundamentally misses the point of
FRCP 44.1. FRCP 44.1 squarely places the burden on the
party wishing to have the court apply foreign law, not on
the court.
Beyond failing to comply with FRCP 44.1, SPC’s
briefing to the district court specifically maintained that
the license agreement should be interpreted under its
plain meaning. 2 SPC argued that “[it] has Standing
under the Plain Language of the License Agreement.”
J.A. 695 (emphasis omitted). In fact, SPC never even
mentions Quebec law in reference to the proper interpre-
tation of the contract language. Thus, SPC went beyond
2 SPC now argues that the license should have been
construed under Quebec law, which does not match Flori-
da’s rules of contract interpretation.
6 SWEEPSTAKES PATENT COMPANY v. BURNS
simply failing to provide the court appropriate notice—it
affirmatively argued to the district court for the plain
reading of the license agreement.
Accordingly, as Sweepstakes did not raise the argu-
ment that the license agreement should be interpreted
under Quebec law to the district court, it has waived that
argument here.
We have reviewed SPC’s remaining arguments and
find them unpersuasive.
CONCLUSION
It is simply too late now for SPC to come to us and
complain about the district court’s construction of the
license agreement. Therefore, for the reasons stated
above, we affirm the judgment of the U.S. District Court
for the Middle District of Florida.
AFFIRMED