PUBLISHED

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

No. 23-1850

HONEYWELL INTERNATIONAL INC.; HAND HELD PRODUCTS, INC.; METROLOGIC INSTRUMENTS, INC.,

Plaintiffs – Appellants,

v.

OPTO ELECTRONICS CO., LTD.,

Defendant – Appellee.

No. 23-2038

HONEYWELL INTERNATIONAL, INC.; HAND HELD PRODUCTS, INCORPORATED; METROLOGIC INSTRUMENTS, INC.,

Plaintiffs – Appellees,

v.

OPTO ELECTRONICS CO., LTD.,

Defendant – Appellant.

Appeals from the United States District Court for the Western District of North Carolina, at Charlotte. Kenneth D. Bell, District Judge. (3:21-cv-00506-KDB-DCK)

Argued: October 30, 2024 Decided: April 29, 2025 USCA4 Appeal: 23-2038 Doc: 69 Filed: 04/29/2025 Pg: 2 of 25

Before GREGORY, RICHARDSON, and BENJAMIN, Circuit Judges

Dismissed by published opinion. Judge Richardson wrote the opinion, in which Judge Gregory and Judge Benjamin joined.

ARGUED: Matthew Scott Stevens, ALSTON & BIRD LLP, Charlotte, North Carolina, for Appellants/Cross-Appellees. Brian David Schmalzbach, MCGUIREWOODS, LLP, Richmond, Virginia, for Appellee/Cross-Appellant. ON BRIEF: Kirk T. Bradley, S. Benjamin Pleune, Stephen R. Lareau, Nicholas C. Marais, Lauren N. Griffin, ALSTON & BIRD LLP, Charlotte, North Carolina, for Appellants/Cross-Appellees. York M. Faulkner, YORKMOODYFAULKNER, Tokyo, Japan, for Appellee/Cross-Appellant.

2 USCA4 Appeal: 23-2038 Doc: 69 Filed: 04/29/2025 Pg: 3 of 25

RICHARDSON, Circuit Judge:

Honeywell International and OPTO Electronics come before us on cross-appeal of

a dispute over a patent-licensing agreement. Each party challenges the district court’s

decision below. But we cannot reach the merits because the United States Court of Appeals

for the Federal Circuit possesses exclusive appellate jurisdiction over this appeal. We

instead dismiss the appeal so that the parallel appeal pending in the Federal Circuit may

proceed.

I. BACKGROUND

Honeywell International, a Delaware corporation, and OPTO Electronics, a

Japanese company, are competitors in the market for barcode-scanning equipment and

technology. In May 2019, Honeywell sued OPTO for patent infringement in both the

United States International Trade Commission and the United States District Court for the

District of Delaware, alleging that the barcode products OPTO imported into the United

States infringed seven patents held by Honeywell. In January 2020, the two parties reached

a truce by settling all pending patent-infringement litigation through a patent-licensing

agreement. The 2020 licensing agreement provided OPTO with licenses on Honeywell’s

entire U.S. patent portfolio in exchange for royalty payments on OPTO’s revenues for “2D

Barcode Products.”

Honeywell did not have to take OPTO’s word on their “2D Barcode Products”

revenue. The agreement permitted Honeywell to audit OPTO’s books to confirm that

OPTO’s revenue representations were accurate and to impose fines for unreported

revenues. Trouble unfolded after Honeywell concluded its audit in March 2021 and

3 USCA4 Appeal: 23-2038 Doc: 69 Filed: 04/29/2025 Pg: 4 of 25

claimed that OPTO had undersold its revenues by s

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