Case: 19-2244   Document: 44     Page: 1   Filed: 10/07/2020




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

                 ANTENNASYS, INC.,
                  Plaintiff-Appellant

                            v.

      AQYR TECHNOLOGIES, INC., WINDMILL
             INTERNATIONAL, INC.,
               Defendants-Appellees
              ______________________

                       2019-2244
                 ______________________

     Appeal from the United States District Court for the
 District of New Hampshire in No. 1:17-cv-00105-PB, Judge
 Paul J. Barbadoro.
                  ______________________

                Decided: October 7, 2020
                ______________________

     STEVEN JAY GROSSMAN, Grossman Tucker Perreault &
 Pfleger, PLLC, Manchester, NH, for plaintiff-appellant.

     LAURA CARROLL, Burns & Levinson LLP, Boston, MA,
 for defendants-appellees. Also represented by ERIC G.J.
 KAVIAR.
                 ______________________

   Before O’MALLEY, BRYSON, and REYNA, Circuit Judges.
 O’MALLEY, Circuit Judge.
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 2               ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.



      There is little more frustrating for a district court judge
 than to have the parties jointly lead you down a wrong, and
 possibly unnecessary, path. That is what occurred
 here. Unfortunately, many threshold issues that may have
 obviated the need for either claim construction or an in-
 fringement verdict remain unresolved. At first blush, this
 is a patent infringement case, with the only dispute before
 us concerning the district court’s construction of one claim
 term in United States Patent No. 7,432,868 (“the ’868 pa-
 tent”). But it is equally likely that Plaintiff’s sole federal
 question count (patent infringement) is predicated on an
 impermissible theory of liability and that the district court
 had no jurisdiction over the remaining state law claims.
 Recognizing that we do not have the benefit of a complete
 factual record on some of the underlying questions, we va-
 cate and remand.
                         BACKGROUND
     This case comes to us from the United States District
 Court for the District of New Hampshire’s grant of sum-
 mary judgment for Windmill International, Inc. and AQYR
 Technologies, Inc. (collectively, “Defendants”) on Plaintiff
 AntennaSys, Inc.’s patent infringement and related state
 law claims. The ’868 patent, directed to portable antenna
 positioners, has two named inventors. The inventors each
 assigned their interest in the patent to their respective em-
 ployers—AntennaSys and Windmill. The parties entered
 into a license agreement pursuant to which Windmill ac-
 quired an exclusive license to AntennaSys’s one-half inter-
 est in the patent in two separate markets—the United
 States Federal Marketplace (sales to the United States
 Government) and the commercial marketplace (sales out-
 side the Federal Marketplace). J.A. 108–09.
     In exchange for the exclusive right and license in the
 commercial marketplace to AntennaSys’s interest in the
 patent, Windmill agreed to pay AntennaSys three percent
 of the gross sales price for each unit of products covered by
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 ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.                 3



 the patent. Under Section 4.A.4 of the agreement, if Wind-
 mill fails to meet certain minimum sales requirements in
 the commercial marketplace, its exclusive license to Anten-
 naSys’s interest becomes non-exclusive. J.A. 109. If that
 occurs, either party has the right to exploit the patent in
 the commercial marketplace, just as they would in the ab-
 sence of any agreement. As to enforcement of the patent,
 the agreement provides that, if Windmill loses its exclusiv-
 ity, either party has the right to commence a lawsuit
 against “third party” infringers. J.A. 111. The parties do
 not dispute that Windmill did, in fact, fail to meet the sales
 requirements of the agreement, such that its license to An-
 tennaSys’s one-half interest in the patent should now be
 non-exclusive.
     As part of this transaction, the parties also agreed that
 “Windmill shall create” an LLC and “shall own the entire
 membership interest in the LLC.” J.A. 108. This LLC was
 to own both Windmill’s own interest in the patent and
 Windmill’s license to AntennaSys’s interest in the patent.
 There appears to be no dispute that Windmill did create
 such an LLC, called GBS Positioner LLC.
      In March 2017, AntennaSys sued AQYR Technologies,
 Inc., Windmill’s wholly-owned subsidiary, for infringement
 of the ’868 patent. It separately filed an arbitration claim
 against Windmill based on an alleged failure to pay royal-
 ties for sales of the accused products pursuant to the li-
 cense agreement. The parties agreed to dismiss the
 arbitration without prejudice and to proceed in district
 court in the same suit that AntennaSys had filed against
 AQYR. Accordingly, the amended complaint contains five
 state law counts (against Windmill, AQYR, or both defend-
 ants), and one count of patent infringement (against
 AQYR). Following claim construction, AntennaSys con-
 ceded that it could not prevail on its patent infringement
 claim under the court’s construction of one of the claim
 terms. Apparently motivated by a desire to moot AQYR’s
 affirmative defenses of invalidity and unenforceability of
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 4               ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.



 the patent in suit, AntennaSys sought summary judgment
 of non-infringement. J.A. 1170–71. AntennaSys asserted
 that the court’s construction of the disputed claim term
 precludes it “from advancing [both] a patent infringement
 liability case against defendants as well as . . . state law
 claims.” J.A. 1172. After conducting a hearing—during
 which AntennaSys agreed that it could not succeed on any
 of its state law claims absent a finding of patent infringe-
 ment—the district court entered judgment for Windmill
 and AQYR. J.A. 1 n.1; J.A. 1369–99. AntennaSys timely
 appealed. 1
                         DISCUSSION
     In reviewing the grant of a motion for summary judg-
 ment we apply the law of the regional circuit in which the
 district court sits, here, the First Circuit. AbbVie Deutsch-
 land GmbH & Co., KG v. Janssen Biotech, Inc., 

, 1295 (Fed. Cir. 2014). The First Circuit reviews a
 grant of summary judgment de novo. Santiago-Diaz v. Ri-
 vera-Rivera, 

, 199 (1st Cir. 2015).
     On appeal, AntennaSys challenges the district court’s
 claim construction. Defendants argue, however, that we



     1   Defendants filed a notice of cross-appeal, but An-
 tennaSys moved to dismiss that cross-appeal as improperly
 directed to AQYR’s affirmative defense of patent invalidity.
 We granted AntennaSys’s motion, explaining that it was
 improper for AQYR to pursue its cross-appeal because the
 judgment was entirely in AQYR’s favor and the district
 court “did not enter a final judgment against AQYR on in-
 validity, but only issued a claim construction order briefly
 touching upon the issue of indefiniteness[.]” Order, Anten-
 naSys, Inc. v. AQYR Techs., Inc., No. 19-2244, at *3 (Fed.
 Cir. Dec. 5, 2019). Notably AQYR did not seek a declara-
 tory judgment of invalidity, asserting invalidity only as an
 affirmative defense to the claim of infringement.
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 ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.                 5



 need not address the merits of this appeal because Anten-
 naSys “lacks standing” to bring a patent infringement
 claim absent joinder of Windmill as a co-plaintiff. As dis-
 cussed below, although Defendants’ arguments are based
 on an incorrect view of current law, we agree that, in this
 case, whether a patent co-owner must be joined is a thresh-
 old issue that must be resolved first. We conclude, moreo-
 ver, that no judgment on infringement should be entered
 without first resolving AQYR’s affirmative defense that it
 was authorized by a co-owner to practice the ’868 patent.
 This is important because, if AQYR was never a proper
 party to these proceedings, as noted below, the district
 court had no jurisdiction over them.
                               A.
     Absent agreement to the contrary, “each of the joint
 owners of a patent may make, use, offer to sell, or sell the
 patented invention within the United States, or import the
 patented invention into the United States, without the con-
 sent of and without accounting to the other owners.” 35
 U.S.C. § 262. We have explained that “the congressional
 policy expressed by section 262 is that patent co-owners are
 at the mercy of each other.” Ethicon, Inc. v. U.S. Surgical
 Corp., 

, 1468 (Fed. Cir. 1998) (internal quo-
 tations omitted). Thus, “by granting a license . . . a patent
 co-owner can effectively deprive its fellow co-owner of the
 right to sue for and collect any infringement damages that
 accrue after the date of the license,” but not already-ac-
 crued damages for past infringement. Schering Corp. v.
 Roussel-UCLAF SA, 

, 345 (Fed. Cir. 1997).
     “An action for infringement,” moreover, “must join as
 plaintiffs all co-owners.” 

(em-
 phasis added). We have recognized two exceptions to this
 statutory requirement: (1) “when any patent owner has
 granted an exclusive license, he stands in a relationship of
 trust to his licensee and must permit the licensee to sue in
 his name;” and (2) “[i]f, by agreement, a co-owner waives
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 6               ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.



 his right to refuse to join suit, his co-owners may subse-
 quently force him to join in a suit against infringers.” Eth-
 

n.9 (citing Indep. Wireless Tel. Co. v.
 Radio Corp. of Am., 

, 469 (1926) and Willing-
 ham v. Lawton, 

, 1344–45 (6th Cir. 1977)).
 We have also held that a non-consenting co-owner or co-
 inventor can never be involuntarily joined in an infringe-
 ment action pursuant to Rule 19 of the Federal Rules of
 Civil Procedure because “the right of a patent co-owner to
 impede an infringement suit brought by another co-owner
 is a substantive right.” STC.UNM v. Intel Corp., 

, 946 (Fed. Cir. 2014). 2
     Citing the above legal principles, Defendants assert
 that we lack jurisdiction over this appeal because Anten-
 naSys “lacks standing” to sue for infringement absent join-
 der of Windmill as a co-plaintiff. Appellees’ Br. 12–13.
 And, AQYR separately asserts that it was authorized by
 Windmill to practice the ’868 patent as a licensee.

 n.10. We note, as we have in other recent cases, that, fol-
 lowing the Supreme Court’s guidance in Lexmark Interna-
 tional, Inc. v. Static Control Components, Inc., 

, 128 n.4 (2014), it is improper to discuss requirements
 for establishing a statutory cause of action in terms of
 “standing.” See, e.g., Schwendimann v. Arkwright Ad-
 vanced Coating, Inc., 

, 1071 (Fed. Cir. 2020)



     2    We are bound by the existing law of this Circuit on
 this point. As I explained in my opinion dissenting from
 the denial of the petition for rehearing en banc in
 STC.UNM v. Intel Corp., 

, 1358–67 (Fed. Cir.
 2014) (O’Malley, J., dissenting), however, and in my con-
 currence in Advanced Video Techs. LLC v. HTC Corp., 

, 1319–26 (Fed. Cir. 2018) (O’Malley, J., concur-
 ring), I continue to disagree with the court’s declaration of
 a substantive patent right that trumps application of Rule
 19.
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 (“Supreme Court precedent ma[kes] clear that our earlier
 decisions treating the prerequisites of the Patent Act as ju-
 risdictional were wrong.”); Lone Star Silicon Innovations
 LLC v. Nanya Tech. Corp., 

, 1235 (Fed. Cir.
 2019) (“[S]o-called ‘statutory standing’ defects do not impli-
 cate a court’s subject-matter jurisdiction[.]”). Anten-
 naSys’s failure to join Windmill as a co-plaintiff impacts
 AntennaSys’s ability to satisfy the statutory prerequisites
 for bringing an infringement suit; it does not impact An-
 tennaSys’s Article III standing. As we explained in Ethi-
 con, the rule that a patent co-owner may refuse to
 voluntarily join suit, thereby frustrating an infringement
 suit by another co-owner, “finds support in section 262 of
 the Patent 

. Thus, contrary to
 characterizations of the issue in our pre-Lexmark case law,
 the statutory requirements of section 262 are not jurisdic-
 tional in nature.
     Despite their non-jurisdictional nature, we agree that
 whether AntennaSys meets these statutory prerequisites
 for bringing an infringement claim is a threshold question
 that both we and the district court must resolve before
 reaching the district court’s claim construction and sum-
 mary judgment rulings. Put simply, if AntennaSys does
 not meet the statutory requirements for bringing its patent
 infringement claim against AQYR, either because Wind-
 mill was not joined as a co-plaintiff or because AntennaSys
 does not adequately state a claim under the Patent Act
 against AQYR, we need not delve into the district court’s
 claim construction. 3




     3  As we explain below, this holds true even in the
 presence of AntennaSys’s state law claims that require an
 underlying finding of infringement.
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 8               ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.



                              B.
     Having determined that we must address Defendants’
 § 262 argument as a threshold issue, we consider whether:
 (1) Defendants waived their § 262 challenge; and (2) De-
 fendants’ substantive arguments have merit.
      We first consider whether Defendants have waived
 their § 262 challenge by failing to raise the argument ear-
 lier. Defendants’ only explanation in this regard is that
 “[t]he lack of standing issue became of practical importance
 only after AntennaSys dismissed its state law claims to se-
 cure the ability to appeal.” Appellees’ Br. 5 n.2. As dis-
 cussed above, this is not an issue of a lack of subject matter
 jurisdiction—a defense that may be considered at any point
 in the proceeding. As we explained in Lone Star, “following
 Lexmark, several courts have concluded that motions to
 dismiss based on ‘statutory standing’ defects are properly
 brought under Rule 12(b)(6) rather than Rule 12(b)(1) in
 recognition of the fact that such defects are not jurisdic-
 tional.” Lone 

. Under Rule 12(h)(2),
 moreover, the defense of failure to state a claim for relief
 may be asserted in a responsive pleading or a motion for
 judgment on the pleadings, or in a motion to dismiss at
 trial. See Charles Alan Wright & Arthur R. Miller, 5C Fed.
 Prac. & Proc. Civ. § 1392 (3d ed.). And as the First Circuit
 has held, such a defense may not be presented for the first
 time on appeal absent “unusual circumstances.” See
 Brown v. Trs. of Bos. Univ., 

, 357 (1st Cir.
 1989); Brule v. Southworth, 

, 410 (1st Cir.
 1979) (failure to contest issue of whether plaintiffs had
 made out a federal claim in the district court, “must be
 taken as conce[ssion] that plaintiffs did state a claim, and
 we accordingly find the issue foreclosed on appeal”).
      Constricting our ability to resolve the issue, however,
 is the procedural path through which this case came to us
 on appeal. The district court’s grant of summary judgment
 depended on concessions the parties made during a hearing
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 ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.                 9



 following AntennaSys’s motion for summary judgment.
 See J.A. 1372–1374. Thus, depending on the nature of
 those concessions, and the court’s interactions with the
 parties, it may be that Windmill has not waived this de-
 fense because it remained live pending a trial that never
 occurred or that this case presents “unusual circum-
 stances” warranting consideration of the issue even after
 final judgment. We decline to read into the appellate rec-
 ord a waiver that the district court is better positioned to
 address.
      We note, moreover, that, even if Windmill did waive its
 right to assert its ability as a co-owner to refuse to join an
 infringement suit against AQYR, AntennaSys does not as-
 sert that AQYR waived any of its affirmative defenses.
 Specifically, there is no assertion or indication in the record
 that AQYR waived the claim that it is a non-infringer by
 virtue of its alleged license to practice the patent. Thus,
 whether Windmill waived any of its rights may be irrele-
 vant if AQYR, which appears to be a separately incorpo-
 rated entity (whether wholly-owned or not), did not waive
 its own rights. Again, the current record prevents us from
 making this determination.
      Unfortunately, the parties’ substantive arguments as
 to joinder of Windmill as a co-plaintiff fare no better. De-
 fendants argue that, as a mere co-owner, AntennaSys may
 neither sue AQYR for infringement on its own, nor join
 Windmill as an involuntary co-plaintiff. Appellees’ Br. 12.
 They also allege that neither of our two recognized excep-
 tions to the requirement of joinder of a patent co-owner ap-
 ply in this case—i.e., this is neither an infringement suit
 brought by an exclusive licensee, nor is there a contractual
 waiver of Windmill’s right to refuse to join suit.

(citing 

). As to the first
 exception, Defendants contend—and AntennaSys does not
 dispute—that AntennaSys is not Windmill’s exclusive li-
 censee.

As to the second exception, Defendants
 insist that Windmill never waived its right to refuse to join
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 10              ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.



 suit as a co-owner of the patent, as required for Anten-
 naSys to proceed against AQYR in Windmill’s absence.
 They contend that AQYR is not a “third party” within the
 meaning of the agreement because it is a wholly-owned
 subsidiary, such that the provision discussing Anten-
 naSys’s right to sue third parties cannot apply to claims
 against AQYR.

does not contend that AQYR
 is a third party under the agreement. Rather, it appears
 to ask that we recognize that the § 262 requirement of join-
 der of all co-owners does not apply in the circumstances of
 this case. It argues that, underlying the § 262 requirement,
 is the principle that an accused infringer is entitled to
 avoid multiple suits for the same acts on the same patents.
 Here, AntennaSys contends, there is no risk that Windmill,
 as a defendant and co-owner, can incur duplicate liability
 by suing its own subsidiary, and thus, there is no need to
 join Windmill as a co-plaintiff. Appellant’s Reply Br.
 12–13. In addition, AntennaSys argues that joinder of
 Windmill as a plaintiff-patentee is not required because
 the joinder rule does not apply “where the patentee is the
 infringer, and must sue itself.” Appellant’s Reply Br. 13-
 14 (citing Ortho Pharm. Group v. Genetics Inst., Inc., 

, 1325 (Fed. Cir. 1995)). We conclude that neither
 sides’ arguments help resolve the dispute.
      In advancing their confusing and potentially meritless
 theories, the parties make certain critical omissions. Nei-
 ther party addresses, in any meaningful way, Windmill’s
 right as a co-owner, to license the ’868 patent “without the
 consent of and without accounting to” AntennaSys.
 35 U.S.C. § 262; see also Schering 

–45 (“[T]he right to license” and “the right to bring suit
 for infringement of the patent without the other co-owner’s
 voluntarily joining the suit,” are “not incompatible, and the
 granting of one does not necessarily imply the relinquish-
 ment of the other.”). Absent agreement to the contrary,
 Windmill had every right to license the patent, and to the
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 ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.               11



 extent AQYR obtained an express or implied license from
 any patent co-owner, AQYR’s activities are authorized and
 non-infringing. Accordingly, even if we were to conclude
 that AQYR is a third party within the meaning of the
 agreement (which, as noted, AntennaSys has not claimed),
 and that Windmill waived the right to refuse to join suit
 against third parties, we must also consider whether the
 agreement limits Windmill’s right, under 35 U.S.C. § 262,
 to practice the ’868 patent as a co-owner or AQYR’s right to
 engage in duly licensed activity.
     Our review of the agreement produces more confusion
 than clarity, however. The agreement provides that Wind-
 mill “shall create” an LLC, which is to own both Windmill’s
 one-half undivided interest in the patent and Windmill’s
 license in AntennaSys’s interest in that same patent.
 J.A. 0108. The agreement further provides that Windmill
 “shall assign” the parties’ agreement to the LLC.

be no dispute that Windmill did, in fact, create
 such an LLC, called GBS Positioner. In their briefing, the
 parties do not address GBS Positioner’s role, nor do they
 explain why, as the presumptive co-owner-by-assignment
 of Windmill’s interest in the ’868 patent, GBS Positioner is
 not an indispensable party to this litigation. 4 The briefing
 and the record before us is also unclear on whether there
 exists an express or implied license from a patent co-owner
 to the alleged infringer. Citing to the pleadings, Windmill
 asserts that it has expressly permitted AQYR to practice
 the asserted patent, and that its provision of a product to
 AQYR to sell “extended an implied license to practice the
 ’868 [p]atent.” Appellees’ Br. 17 n.10; see also J.A. 0200
 (AQYR’s Seventeenth Affirmative Defense stating its



     4    Defendants admit in their respective Answers that
 GBS Positioner “currently holds Windmill’s one-half inter-
 est in certain patents.” J.A. 0181 ¶14; J.A. 0192 ¶14 (em-
 phasis added).
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 12              ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.



 “activity is permitted by an express or implied license”).
 On the record before us, we cannot ascertain whether
 Windmill’s (and AQYR’s) assertion to that effect is true or
 whether GBS Positioner, the presumptive co-owner-by-as-
 signment, granted AQYR an express or implied license to
 practice the patent in suit. Without the benefit of underly-
 ing factual findings from the district court, we refuse to ad-
 dress whether the agreement limits one patent co-owner’s
 right to practice the patent in a way that prevents it from
 issuing a license to the alleged infringer, or whether the
 patent infringement claim should be dismissed because an
 express or implied license exists.
     Accordingly, we remand for the district court to ad-
 dress these issues in the first instance. On remand, the
 district court should resolve all factual issues pertaining to
 AntennaSys’s ability to bring its patent infringement claim
 against AQYR, including: (1) whether Windmill waived the
 right to object to AntennaSys’s failure to meet the § 262
 prerequisite, via the license agreement or otherwise;
 (2) whether GBS or Windmill holds or retains ownership
 interest in the ’868 patent; (3) whether AntennaSys’s pa-
 tent infringement suit is barred under § 262 because there
 exists an express or implied license from the real patent
 owner to AQYR; and, (4) the timing of any such license.
                              C.
     Finally, we address why, in the event AntennaSys’s pa-
 tent infringement claim against AQYR should be dis-
 missed—either due to absence of a co-owner or the
 existence of an implied license from a co-owner to the ac-
 cused infringer—the district court’s claim construction
 may still be unnecessary.
     Even where federal law does not create the cause of ac-
 tion asserted, federal jurisdiction extends to a “special and
 small category” of cases in which a well-pleaded complaint
 establishes that “a federal law issue is: (1) necessarily
 raised, (2) actually disputed, (3) substantial, and
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 ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.               13



 (4) capable of resolution in federal court without disrupting
 the federal-state balance approved by Congress.” Gunn v.
 Minton, 

, 258 (2013). AntennaSys argues that
 its state law claims provide “an independent basis for dis-
 trict court and appellate jurisdiction.” Appellant’s Reply
 Br. 7–12. Citing a case from this court that long predates
 Gunn v. Minton, it contends that, whenever a state-court
 claim requires a court to engage in claim construction, the
 claim necessarily arises under the Patent Act. Appellant’s
 Reply Br. 8, 10 (citing U.S. Valves Inc. v. Dray, 

, 1372 (Fed. Cir. 2000)). We disagree.
      At the very least, AntennaSys cannot meet the “sub-
 stantiality” prong of the analysis. Substantiality looks to
 “the importance of the issue to the federal system as a
 whole.” 

. A substantial federal issue
 may exist where (1) the federal issue is purely a question
 of law, rather than one that is “fact-bound and situation-
 specific”; (2) the Federal government has a direct interest
 in the issue, such as where the availability of a federal fo-
 rum to vindicate the government’s own administrative ac-
 tion is implicated; or, (3) if the court’s resolution of the
 issue will control numerous other cases. See NeuroRepair,
 Inc. v. The Nath Law Grp., 

, 1345 (Fed. Cir.
 2015) (citing Empire Healthchoice Assurance, Inc. v.
 McVeigh, 

, 700 (2006) and Grable & Sons
 Metal Prods., Inc. v. Darue Eng’g & Mfg., 

, 315
 (2005)). These factors are non-exclusive and “none . . . is
 necessarily controlling.”

issue—in-
 fringement of the patent in suit—is fact-bound and situa-
 tion-specific. This case does not present a context-free
 interpretation of a patent statute, but requires merely that
 the court apply patent law to the facts of the case. As Gunn
 makes clear, it is not enough to suggest that there is an
 interest in uniform application of patent law, or that the
 federal courts are uniquely-situated to resolve the patent
 law question presented. 

–62; see also
 Inspired Dev. Grp., LLC v. Inspired Prods. Grp., LLC, 938
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 14              ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.



 F.3d 1355, 1365–67 (2019). If that were enough to support
 a finding of “substantiality,” we would find jurisdiction in
 any case implicating a patent law issue. Indeed, “state
 courts can be expected to hew closely to the pertinent fed-
 eral precedents” in resolving the infringement dispute at
 issue. 

. Finally, we do not believe
 resolution of this case would control numerous other
 cases. 5
      In sum, to the extent the district court concludes that
 AntennaSys’s patent infringement claim—the sole federal
 question count in the lawsuit—should be dismissed, the
 district court had no independent jurisdiction over the
 state law counts in AntennaSys’s complaint. Accordingly,
 if the patent infringement count is dismissed, this case be-
 longs in state court. 6
                        CONCLUSION
      This exercise has been an extremely frustrating one for
 the court. We suspect the district court will feel the same
 way. But just as bad facts can make bad law, misdirected
 lawyering can do the same. We refuse to take the parties’
 invitation to rule on these issues in the first instance and
 on an incomplete record. For the foregoing reasons, we
 must vacate the district court’s grant of summary judg-
 ment and remand for proceedings consistent with this opin-
 ion.
                VACATED AND REMANDED



      5  To the extent U.S. Valves is to the contrary, that
 precedent was abrogated by Gunn and our subsequent case
 law applying Gunn.
     6   Because we are not privy to the parties’ discussions
 regarding Windmill’s waiver of arbitration, we express no
 view on the continued vitality of that waiver in light of our
 ruling.
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 ANTENNASYS, INC.   v. AQYR TECHNOLOGIES, INC.               15



                             COSTS
     The parties shall bear their own costs.