Patently-O Bits and Bytes No. 326

Two Queries:

  • Intervening: I previously wrote about the case of Block Financial v. LendingTree (W.D. Mo. Feb 23, 2010) where the district court agreed to vacate is summary judgment holding of invalidity in order to facilitate a settlement. How difficult would it be for a third party intervene in the recently dismissed case in order to request a reinstatement of the opinion?
  • Mandamus Jurisdiction: I have been writing some about Federal Circuit Appellate Jurisdiction. Can someone help piece together an explanation of the Federal Circuit’s claim to jurisdiction over interlocutory appeals in the form of a writ of mandamus. I’m especially interested in resolving the court’s appellate jurisdiction over a writ of mandamus asking a question regarding regional circuit law as seen in TS Tech and its progeny.

San Francisco Bay Area/Napa: For over 50 years years, the San Francisco Intellectual Property Law Association has been hosting an annual IP seminar. This year’s event, at the Meritage Resort in Napa Valley April 30 – May 2, is in partnership with LES (incl. a special track of licensing programs) and WIPLA (Women IP Lawyers Association) and includes several law professors, David Kappos and/or Sharon Barner (USPTO – invited), and various other nationally recognized speakers. [Link]

14 thoughts on “Patently-O Bits and Bytes No. 326

  1. 13

    “one of the registered minions”

    Hey bright boy – Gene dropped the registered requirement after about a week. But he has something against my sharks, so I’m sticking here.

  2. 12

    OT but this comment from Gene Quinn caught me eye:

    Like the clear majority of Americans who oppose the [healthcare reform] bill, I think this was the wrong thing to do and will ultimately be a disaster.

    And then there’s reality:

    link to

    Do you oppose that legislation because you think its approach toward health care is too liberal, or because you think it is not liberal enough?

    39 % Favor (from previous question)
    43% Oppose, too liberal
    13% Oppose, not liberal enough

    More like a “clear minority.” Maybe one of the registered minions can give Gene a clue.

  3. 11

    On the mandamus question, I think Dennis has put his finger on a very complex and difficult issue. Cases like Lights of America, BBC, and Regents would certainly seem to establish the Federal Circuit’s mandamus jurisdiction over issues of regional circuit law. But I think a strong argument can be made that the courts of appeals have failed to develop a coherent doctrinal and theoretical rationale to support Federal Circuit jurisdiction in these cases. In fact, in a number of decisions in the mid-to-late 1980s, the Federal Circuit expressed reservations about whether it had authority to review issues of regional circuit law via mandamus. Most notably, in In re Innotron Diagnostics, the Court indicated that the only petitions over which it would exercise mandamus jurisdiction were “those, and only those, in which the patent jurisprudence of this court plays a significant role.” 800 F.2d 1077, 1083-84 (internal quotation marks omitted). As relevant to Dennis’s question about TS Tech, the Court in Innotron specifically singled-out petitions seeking “transfer . . . to another district” as seeking “a writ [that] would not be ‘in aid of [Federal Circuit] jurisdiction.’” Id. at 1082.

    The Court clearly disregarded this principle in TS Tech and has also done so in many, many other mandamus cases. But, rather than confronting this older case law, the cases that have addressed Innotron generally make a weak attempt to distinguish it or downplay its significance. For example, in In re Princo Corp., Judge Dyk dismissed Innotron as articulating a mere “discretionary exception” to the Court’s mandamus jurisdiction. 478 F.3d 1345, 1352 (Fed. Cir. 2007). It is true that Innotron relied in part on “policy” and “comity” considerations. 800 F.2d at 1082-84. But Innotron also clearly rested on purely legal principles of jurisdiction. Specifically, the Court wrote that “a writ would not be ‘in aid of [Federal Circuit] jurisdiction’” if issued on a petition (1) “implicating responsibilities of regional circuit courts for supervising, administering, overseeing, and managing the courts within the circuit (e.g., assignment of judges, adjustment of calendars, transfer of case to another district, reference to master)” or (2) raising issues “that arise in all types of cases, but do not directly implicate the patent or Little Tucker Act doctrinal jurisprudence of this court (e.g., disqualification of counsel).” Id. at 1082. TS Tech (along with many other Federal Circuit mandamus cases) is clearly in tension with this language, but the Court has never satisfactorily explained why the Innotron Court was wrong.

    In an article I’m currently drafting, I intend to argue that a strong normative case can be made that the Federal Circuit SHOULD have mandamus jurisdiction over issues of non-patent law that arise in patent cases. First, and most fundamentally, the All Writs Act supports Federal Circuit jurisdiction over those petitions. Because the Federal Circuit’s appellate jurisdiction covers the non-patent aspects of a case, the Federal Circuit clearly “aids” its appellate jurisdiction when it exercises mandamus authority over those issues. Second, Federal Circuit jurisdiction over mandamus petitions raising non-patent issues eliminates the jurisdictional complexity that would arise from having separate standards for mandamus jurisdiction (e.g., the “patent jurisprudence of this court plays a significant role” standard articulated in Innotron) and appellate jurisdiction (e.g., the standards articulated by the Supreme Court in Christianson and Vornado). Third, Federal Circuit mandamus authority over non-patent issues furthers many of the aims that Congress had when it created the Federal Circuit. Most notably, it eliminates forum shopping, because it is no longer possible to use mandamus to circumvent exclusive Federal Circuit jurisdiction. Finally, there seems to be value in having the Federal Circuit speak on non-patent issues that frequently arise in patent litigation and that are not easily reviewed on appeal. The Federal Circuit’s perspective would not only provide doctrinal guidance for lower courts, but would also help percolate non-patent issues for consideration by other courts of appeals and, ultimately, the Supreme Court.

    Unfortunately, the Federal Circuit has never explicitly considered the merits (or demerits) of any of these arguments for mandamus jurisdiction over issues of regional circuit law. Instead, the Court has offered only strained readings and empty distinctions of Innotron. My paper would urge the Court to finally confront these considerations head on and to clearly articulate a doctrinal and theoretical basis for its assertion of mandamus jurisdiction over issues of regional circuit law.

  4. 10

    Dear Lionel Hutz and IANAE,

    Lionel wrote to IANAE on this thread:
    link to

    I learned a long time ago that JAOI believes “exclusive right” = “absolute right to an injunction barring important public policy considerations” He’s incorrect and cannot cite any case law to support his position, but that is what he believes.
    Posted by: Lionel Hutz | Mar 17, 2010 at 12:40 PM”

    * * * * *
    I (Jaoi) wrote to IANAE:
    “What if, after a trial finding validity and infringement of the patent-in-suit, the Judge simply said to the pharking infringer:
    I hereby Order you to stop the infringement forthwith. If you do not, you will be guilty of contempt of court and I will issue a warrant for your arrest.”

    And IANAE wrote to me
    “That would be a little thing we in the biz call an ‘injunction’.”

    * * * * *

    The substantive response is that the pharking infringer may seek a Stay of Execution pending an Appeal, and he may have grounds for Appeal at the CAFC citing the USSC’s (corrupt) eBay decision which discriminates against one class of inventors, i.e., non practicing entity (NPE) patent owners.

    Supposed the pharking infringer were to prevail in the CAFC Appeal, and the District Court’s Order to Stop the Infringement was reversed, and the case was remanded for further litigation consistent with the CAFC decision.

    What if, after further litigation, the DC Judge were favor the patent owner again and issue a TRO to stop the infringement and an Order to Show Cause against the pharking infringer as to why he would be justified to continue infringement (given, of course, that the pharking infringer has not come to terms with the patent-in-suit owner).

    Then, the pharking infringer takes another CAFC Appeal – how would the CAFC deal with that?, if, e.g., the patent owner argued that the fee from a forced license from him to the pharking infringer would not assuage the patent owner’s mental anguish?

    And, arguendo some more, suppose the patent-in-suit covered the 2001 revolutionary Ticket in Ticket out bar coded tickets used in casino slot machines (so the casino didn’t have to deal with the labor and other horrendous distractions from handling coins or tokens in slot machines).

    And further, that the NPE patent owner argued that he was against gambling on his personal moral and religious grounds, and he did not want his patent used to fleece gamblers out of rent and college funds with the greater efficiency afforded by his patent.

    Further still arguing that, when my patent runs out, that’s soon enough for the casino to use the invention.

    Is not the NPE patent owner absolutely entitled to stop the infringement notwithstanding the USSC’s eBay ruling?

    Would youse guys agree with me that the answer to my question is:

    (a) (my choice) a resoundingly, “Yes”?,

    or just plain

    (b) “Yes”?


    (c) Other________

  5. 7

    I agree with HP. Whether the question is one of local circuit law is immaterial. 28 U.S.C. 1651 gives appellate jurisdiction over writs, as stated above, that is “necessary or appropriate in aid of [its] jurisdiction.”

    That jurisdiction referred to in 1651 is, I believe, the eventual appellate jurisdiction defined by 28 U.S.C. 1295. Section 1295 gives the Fed. Cir. exclusive jurisdiction over all issues in a case arising under the patent laws, including non-patent issues.

    While 1295 is not controlling (since there is no final decision) is is informative as to the meaning of section 1651.

  6. 6

    Adding to whodat’s response, See
    In re BBC Int’l, 99 F.3d 811, (7th Cir. 1996) (no mandamus jurisdiction in a patent case);
    Lights of Am. v. United States Dist. Court, 130 F.3d 1369 (9th Cir. 1997) (same);
    In re Regents of Univ. of Cal., 964 F.2d 1128 (Fed. Cir. 1992)(“The Federal Circuit’s authority in extraordinary writ is beyond challenge.”);
    Franchi v. Manbeck, 947 F.2d 631 (2nd Cir. 1991) (no mandamus or appeal jurisdiction);
    Kennecott Corp. v. U.S. Dist. Court for Southern Dist., 873 F.2d 1292 (9th Cir. 1989).

  7. 5

    Dennis, I think HP’s analysis is likely right. It is true that the venue question is decided under regional law; but it is a case that falls under the Federal Circuit’s jurisdiction. Subject-matter jurisdiction and choice of law are two completely different questions.

  8. 4

    it may be questionable considering the connection between venue and regional circuit law, but analysis like HP’s seemingly swayed the 5th circuit, see 06-40329 and the seventh circuit, see 99 f3d at 812.

  9. 3

    Thanks HP – I agree that writs should be analyzed under 28 USC 1651. However, I don’t know if your follow-on analysis is correct — especially when considering issues such as venue that are very much tied to regional circuit law.

  10. 2

    On the mandamus/jurisdiction question, I would suggest that a writ of mandamus is not a “form” of interlocutory appeal and so there is no issue whether the court has “interlocutory appellate jurisdiction” regarding writs of mandamus. Instead, under 28 USC 1651, the Federal Circuit has the authority to issue a writ of mandamus if the writ is “necessary or appropriate in aid of [its] jurisdiction.” I would suggest that if the Federal Circuit will have exclusive appellate jurisdiction from a final judgment, then it has the power to issue a writ of mandamus “in aid of” that eventual appellate jurisdiction in cases that meet the requirements for extraordinary relief in the form of a writ (e.g., not effectively reviewable on appeal, etc.).

    On the other hand, it would seem that a regional circuit would not have the authority to issue a writ of mandamus in a case like TS Tech (even where only non-patent issues are raised by the petition). The regional circuit’s writ would not be “in aid of” its jurisdiction because it would have no jurisdiction in an appeal from a final judgment in the case.

  11. 1

    On the question of intervening to protest a motion to vacate, some courts don’t like to allow third parties to formally intervene in a law suit to protest a motion to vacate a prior claim construction or invalidity ruling as part of a settlement. But they may be open to letting the third party submit an amicus brief in opposition to the motion to vacate. (too late to use the amicus briefing tactic for the W.D. Mo. case)

    E.g. Infineon Technologies N. Am. Corp. v. Mosaid Technologies, Inc., No. C 02-5772 JF(RS), 2006 WL 3050849, *4 (N.D. Cal. Oct. 23, 2006) (denying third parties’ motion to intervene in patent infringement law suit to oppose a joint motion by patentee and accused infringer to vacate all prior rulings in the case, including a prior claim construction ruling, as part of a settlement of the case, since the third parties had no protectable legal interest in the case, but, granting the third parties the status of amici curiae and deferring ruling on whether to vacate the prior orders until after the parties and amici briefed the issue of whether the prior claim construction order would have preclusive effect, the court noting that if the claim construction order would have preclusive effect it would not vacate the order, if it did not have preclusive effect it would vacate the order), on subsequent proceeding, 2007 WL 420194, *3 (N.D. Cal. Feb. 5, 2007) (denying patentee and accused infringer’s joint motion to vacate all rulings, including claim-construction rulings, entered in the case after the parties settled, in view of arguments presented by third-party amicus involved with the patentee in other infringement suits on the same patent, and ruling that because the claim-construction rulings could have preclusive effect in the other litigations the court would not vacate the orders so that the judges in the other litigations could decide for themselves whether issue preclusion should apply to the claim-construction rulings).

    See also Allen-Bradley Co. v. Kollmorgen Corp., 199 F.R.D. 316, 318-20 (E.D. Wis. 2001) (denying motion by nonparty to intervene and oppose the requested vacatur because the nonparty’s interest in seeking to use claim construction order under issue preclusion in another suit against the patentee was too indirect or insubstantial to permit intervention as of right, and the court sua sponte denied to permit permissive intervention)


    Collegenet, Inc. v. Applyyourself, Inc., No. CV-02-484-HU, 2009 WL 1506679, *2-*3 (D. Or. May 28, 2009) (denying third party accused infringer motion to intervene to contest the court’s acceptance of a consent judgment proffered by the parties as part of a settlement agreement that held the patent claims not invalid and not unenforceable, where the movant argued that the consent judgment effectively vacated the district court’s prior summary judgment that under collateral estoppel based on another infringement case, the XAP case, the claims were invalid for obviousness, the district court noting that since the summary judgment order was not final, the consent judgment was not inconsistent with the summary judgment order, nor did the consent judgment operate as a Rule 60(b) judgment vacating the summary judgment order, further ruling that the movant’s real interest lied in the XAP case, in which the court in that case found the claims obvious, and for which the movant had a pending motion to intervene)

    But then again, other courts may allow intervention if timely sought.

    E.g. Ericsson, Inc. v. Interdigital Communications Corp., No. 3:93-CV-1809-M, 2004 WL 1636924, *11 – *13 (N.D.Tex. June 3, 2004) (granting licensee’s motion to intervene to seek a reinstatement of previously vacated prior claim construction and summary judgment orders and granting licensee’s Rule 60(b) motion to reinstate the prior rulings because the district court had committed an “obvious error of law” in originally vacating orders in response to patentee’s and accused infringer’s joint motion and rejecting contentions that “(1) the parties’ agreement to file the joint motion to vacate was a critical issue during the settlement negotiations; (2) no novel or controversial legal issues were decided in the rulings; (3) no non-parties would be affected by the vacatur ‘because there is no other litigation currently pending in any other court regarding the patents and issues involved in this litigation;’ (4) the public interest in the decisional law is weak because the rulings sought to be vacated are interlocutory; and (5) the parties disagree with various aspects of the rulings and wish to prevent the rulings from having future precedential effect” provided sufficient exceptional circumstances to permit vacatur)

    For the particular W.D. Mo. case, it may be too late to seek intervention if the case has already been dismissed.

    See Ericsson, Inc. v. InterDigital Comm. Corp., 418 F.3d 1217, 1222-23, 75 USPQ2d 1933, 1936-37 (Fed. Cir. 2005) (ruling, under Fifth Circuit law, that the district court erred as a matter of law in permitting a nonparty to intervene in an infringement suit, after the suit had been settled and dismissed with prejudice, for the purpose of granting the intervenor’s motion to unseal the record and vacate order that vacated prior claim construction and summary judgment orders because at the time the intervenor made its motion there was no live case, nor could the court’s ruling be justified under Rule 60(b) since the motion was not made by a party)

    See generally, Robert A. Matthews, Jr., Annotated Patent Digest § 38:66—Seeking Vacatur in Connection with Settlement; and § 39:78.60 —Nonparties Seeking Intervention to Oppose Vacatur of Prior Rulings

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