Justia U.S. Federal Circuit Court of Appeals Opinion SummariesArticles Posted in Civil Procedure
In Re: Apple Inc.
Aire sued Apple for patent infringement in the Western District of Texas in October 2021. In April 2022, Apple moved for transfer to the Northern District of California. Apple submitted a declaration from an Apple finance manager, “to establish certain facts, such as the relevance, role, and locations of witnesses and their teams, as well as the relevance and locations of various categories of documents.” Shortly before the close of venue discovery, Apple sought leave to supplement its motion with additional declarations, offering to make the declarants available for deposition and stating non-opposition to a “reasonable continuance” of the transfer proceedings.The district court granted Apple’s motion, but sua sponte ordered the parties to complete fact discovery on the merits (which it extended for an additional 30 weeks) and go through another six weeks of re-briefing of the motion before it would rule on Apple’s request to transfer. Apple then sought a writ of mandamus. Citing judicial economy, the Federal Circuit vacated the district court’s amended scheduling order and directed the court to postpone fact discovery and other substantive proceedings until after consideration of Apple’s motion for transfer. View "In Re: Apple Inc." on Justia Law
Uniloc USA, INC. v. Motorola Mobility, LLC
Uniloc sued Motorola for infringement of a patent that concerns pairing a telephone with another device and using the other device to make a telephone call using the telephone’s cellular capabilities. Motorola alleged that Uniloc lacked standing, having granted Fortress a license and an unfettered right to sublicense the asserted patent. The district court dismissed, agreeing that Uniloc had granted a license and that the existence of a license deprived it of standing. Related cases, in which Uniloc had alleged infringement, had been dismissed for lack of subject matter jurisdiction. On appeal, Motorola asserted collateral estoppel.The Federal Circuit affirmed. The court acknowledged that patent owners arguably do not lack standing simply because they granted a license that gave another party the right to sublicense the patent to an alleged infringer but declined to address that issue. , Uniloc was collaterally estopped from arguing that it did not grant a license, including a right to sublicense, to Fortress, and that the existence of that license deprived Uniloc of standing. View "Uniloc USA, INC. v. Motorola Mobility, LLC" on Justia Law
In Re Monolithic Power Systems, Inc.
Bel Power sued, alleging that Monolithic infringes Bel’s patents by selling certain power modules to original equipment manufacturers and other distributors and customers that use the products in their own electronic devices. Monolithic moved to dismiss or transfer for lack of venue under 28 U.S.C. 1406(a), arguing that, as a Delaware corporation, it does not “reside” in the Western District of Texas, that it does not own or lease any property in that district, and that the homes of four full-time remote employees in the Western District identified in the complaint to support venue do not constitute a “regular and established place of business.” Monolithic alternatively moved to transfer to the Northern District of California.The Federal Circuit upheld the denial of both requests. Monolithic viewed maintaining a business presence in the Western District as important, as evidenced by a history of soliciting employment in Austin to support local customers, even if none of its Western District employees were required to reside there. Monolithic provided certain Western District employees with lab equipment or products to be used in or distributed from their homes as part of their responsibilities. The convenience of parties and witnesses and the interests of justice did not weigh in favor of transfer under the multi-factor approach; Monolithic failed to demonstrate that California was clearly more convenient than the Western District. View "In Re Monolithic Power Systems, Inc." on Justia Law
California Steel Industries, Inc. v. United States
Domestic manufacturers or distributors who imported steel products subject to an ad valorem “national security” tariffs, 19 U.S.C. 1862, sought exclusions from the tariff. Domestic steel producers objected to those requests, asserting that “they could satisfactorily produce all of, or sufficient substitutes for, the material that was the subject of the exclusion requests.” The Department of Commerce denied the exclusion requests. The importers paid the duties and imported the steel products, then filed lawsuits, contending that Commerce failed to consider relevant evidence, failed to give adequate explanations, and in some instances considered legally irrelevant factors.Domestic producers, who had objected to the tariff exclusion requests before Commerce, moved to intervene as party defendants in the importers’ lawsuits. The Federal Circuit affirmed the Trade Court’s denial of intervention. Each of the proposed intervenors’ requested relief is largely identical to the government’s prayer for relief, so they have established “piggyback” standing but they did not identify a legally protectable interest to qualify as intervenors under Rule 24(a)(2). The court rejected arguments that participation in adversarial administrative proceedings bestows a Rule 24(a)(2) interest in the result, that actions to undo tariffs that specifically protect domestic producers give rise to economic interests, and that judgments removing tariff protection may practically impair the interests of direct beneficiaries of those tariffs. View "California Steel Industries, Inc. v. United States" on Justia Law
Arendi S.A.R.L. v. LG Electronics Inc.
Arendi sued LG for infringement. The District of Delaware’s rules required Arendi to “specifically identify the accused products and the asserted patent(s)” and to produce "an initial claim chart relating each accused product to the asserted claims each product allegedly infringes.” Arendi filed its Disclosure, listing hundreds of LG products as infringing four claims of the 843 patent but provided claim charts for only one product—LG’s Rebel 4 phone, labeling the Rebel 4 as “exemplary.” LG objected, stating that, “[s]hould Arendi intend to accuse [non-Rebel 4] products, then Arendi must promptly provide claim charts demonstrating how these products infringe or explain why Arendi contends the current claim charts are representative of specific non-charted products.” Arendi did not respond. The parties later agreed on eight representative products to represent all accused products, including seven non-Rebel 4 products. Arendi did not supplement its Disclosure. In response to an interrogatory relating to those eight products, LG reiterated that Arendi only provided infringement contentions for the Rebel 4. Arendi provided its expert report months after the close of fact discovery.The district court granted LG's motion to strike portions of that report because it “disclosed—for the first time—infringement contentions for five of” the non-Rebel 4 representative products. Arendi still did not supplement its Disclosure but filed a second complaint, asserting that LG’s non-Rebel 4 products infringed the 843 patent. The Federal Circuit affirmed the dismissal of the complaint, citing the duplicative-litigation doctrine. View "Arendi S.A.R.L. v. LG Electronics Inc." on Justia Law
Realtime Adaptive Streaming LLC v. Netflix, Inc.
Realtime filed patent infringement actions against Netflix in the District of Delaware. While that action was ongoing, Netflix filed petitions for inter partes review (IPR) and moved to dismiss the complaint, arguing patent ineligibility under 35 U.S.C. 101. Following the institution of the IPR proceedings and a recommendation from the Delaware magistrate finding certain claims ineligible, Realtime voluntarily dismissed the Delaware action—before the district court ruled on the magistrate’s findings. The next day, Realtime reasserted the same patents against Netflix in the Central District of California—despite having previously informed the Delaware court that transferring the Delaware action to the Northern District of California would be an unfair burden on Realtime. Netflix then moved for attorneys’ fees and to transfer the actions back to Delaware. Before a decision on either motion, Realtime again voluntarily dismissed its case.Netflix renewed its motion for attorneys’ fees for the California actions, the Delaware action, and IPR proceedings. The district court awarded fees for both California actions under 35 U.S.C. 285, and, alternatively, the court’s inherent equitable powers. The court declined to award fees for the Delaware action or IPR proceedings The Federal Circuit affirmed. The district court did not abuse its discretion in awarding fees under its inherent equitable powers or in denying fees for the related proceedings The court did not address whether the award satisfies section 285's requirements. View "Realtime Adaptive Streaming LLC v. Netflix, Inc." on Justia Law
Morris v. McDonough
Morris served in the Army, 1965-1968. In 1970, he unsuccessfully sought disability benefits (38 U.S.C. 1110), alleging a disability based on a nervous condition connected to his service. The VA instead granted his claim for a pension based on a non-service-connected condition. In 2005, Morris sought compensation based on service-connected PTSD; he was eventually assigned a 100% disability rating.Morris has for many years been seeking an earlier effective date for service-connected disability compensation. The VA regional office and the Board of Veterans’ Appeals found no clear and unmistakable error. The Court of Appeals for Veterans Claims rejected a claim that a September 1970 notice from the VA—giving notice of the August 1970 rating decision—was constitutionally inadequate under the Due Process Clause; Morris had not presented this argument to the Board but contended that the Veterans Court was obligated to consider this constitutional question in the first instance under 38 U.S.C. 7261(a)(1). The Veterans Court exercised its discretion, under issue-exhaustion precedents, to decline to entertain the argument presented for the first time on appeal. The Federal Circuit affirmed the dismissal of the appeal. The Veterans Court had the discretion to apply an issue-exhaustion analysis and correctly applied that analysis. View "Morris v. McDonough" on Justia Law
Static Media LLC v. Leader Accessories LLC
Static sued Leader in Wisconsin for infringing its D400 design patent. The parties entered into a court-approved protective order, under which they could designate certain material produced during discovery as “Confidential,” to be used solely for the purpose of the litigation, with disclosure limited to certain people. Outside independent persons retained for the Wisconsin action were bound by the protective order because they were obligated to sign a “Written Assurance.” After the parties agreed to the protective order, Static sent a cease-and-desist letter to OJ, also alleging infringement of the D400 patent. OJ’s attorney, Hecht, contacted Leader’s attorney, Lee; the parties entered into a Joint Defense Agreement.Static sued OJ for infringement in Florida. Lee sent Hecht copies of the protective order and Written Assurance from the Wisconsin action. Hecht signed and returned the Written Assurance to Lee. Lee emailed Hecht deposition transcripts and related exhibits from the Wisconsin action; only a few pages were marked confidential, reminding Hecht to “adhere to the protective order.” During settlement negotiations in the Florida action, Hecht improperly used royalty agreements he obtained from Lee to assess a settlement proposal.The court found Leader and Lee in civil contempt for violating the protective order and ordered Leader to pay Static’s attorney’s fees and a $1,000 sanction. The Federal Circuit reversed. The disclosure was not a clear violation of the protective order. View "Static Media LLC v. Leader Accessories LLC" on Justia Law
Centripetal Networks, Inc. v. Cisco Systems, Inc.
Centripetal sued Cisco for the infringement of 10 patents relating to systems that perform computer networking security functions. Centripetal successfully requested that the case be reassigned to Judge Morgan, who had recently presided over a trial involving related technology and five of the same patents. While the case was pending, Judge Morgan sent the parties an email, stating that the previous day, his assistant had discovered that his wife owned 100 shares of Cisco stock valued at $4,687.99. He stated that the “shares did not and could not have influenced [his] opinion.” The disqualification statute, 28 U.S.C. 455, refers to financial interests held by family members. Centripetal had no objection to the judge’s continuing to preside over the case.Cisco sought recusal. Judge Morgan stated that section 455(b)(4) did not apply because he had not discovered his wife’s interest in Cisco until he had decided “virtually” every issue and that placing the Cisco shares in a blind trust “cured” any conflict, then found that Cisco willfully infringed the asserted claims and awarded Centripetal damages of $755,808,545 (enhanced 2.5 times to $1,889,521,362.50), pre-judgment interest ($13,717,925), and “a running royalty."The Federal Circuit reversed the denial of Cisco’s motion for recusal, vacated all orders and opinions of the court entered on or after August 11, 2020, including the final judgment, and remanded for further proceedings before a different district court judge. View "Centripetal Networks, Inc. v. Cisco Systems, Inc." on Justia Law
Mitek Systems, Inc. v. United Services Automobile Association
USAA, a reciprocal inter-insurance exchange organized under Texas law with its principal place of business in San Antonio, owns the four patents, which address the use of a mobile device to capture an image of a bank check and transmit it for deposit. Mitek filed suit in the Northern District of California, seeking a declaratory judgment (28 U.S.C. 2201(a)), that Mitek and its customers have not infringed, either directly or indirectly, any valid and enforceable claim of USAA’s patents. USAA moved for dismissal of the complaint, arguing that there was no case or controversy between USAA and Mitek and that the court should exercise discretion not to hear Mitek’s claim. In the alternative, USAA requested the transfer of the action to the Eastern District of Texas under 28 U.S.C. 1404. The California court, without ruling on the dismissal motion, ordered the case transferred to Texas.The Texas court dismissed for want of a case or controversy, stating that, even if jurisdiction existed, it would exercise its discretion to decline to entertain the action. The Federal Circuit vacated the Texas court’s dismissal and remanded, affirming the California court’s transfer order. To make the “case or controversy” determination, the district court’s primary task will be to ascertain the alleged role of the Mitek technology in the banks’ applications and the alleged role that the Mitek technology plays in infringement claims. View "Mitek Systems, Inc. v. United Services Automobile Association" on Justia Law