Blackhawk Network Incorporated v. SL Card Company Incorporated
Opinion
1 WO 2 3 4 5
9 Blackhawk Network Incorporated, No. CV-21-00813-PHX-MTL
10 Plaintiff, ORDER
11 v.
12 SL Card Company Incorporated, et al.,
13 Defendants. 14 15 Four motions are pending before the Court: (1) Plaintiff’s Motion to Amend 16 Judgment Pursuant to Fed. R. Civ. P. 59(e) (Doc. 81); (2) Plaintiff’s Motion for Leave 17 to File Its Motion to Disqualify Quinn Emmanuel Under Seal (Doc. 84); (3) Plaintiff’s 18 lodged Motion to Disqualify Quinn Emmanuel (Doc. 85); and (4) Defendants’ Motion 19 to Strike Plaintiff Blackhawk’s Motion to Disqualify for Failure to Serve (Doc. 87). As 20 explained below, the Court will grant Plaintiff’s motion to amend and deny the 21 remaining motions. 22 I. 23 Blackhawk instigated the instant action on May 6, 2021, alleging claims for 24 correction of inventorship under the Federal Patent Act, 35 U.S.C. § 256, and breach 25 of contract under Arizona law. (See Docs. 1, 12, 42, 46.) Defendants filed motions 26 to dismiss Blackhawk’s claims for, among other things, lack of subject matter jurisdiction. 27 (See Docs. 58, 59.) The Court granted Defendants’ motion on March 9, 2022, and 28 dismissed Blackhawk’s claims for lack of subject matter jurisdiction without leave to 1 amend. (See Doc. 78.) The Court entered judgment against Blackhawk that same day and 2 closed the case. (Doc. 79.) 3 Blackhawk now petitions the Court to amend the judgment to clarify that its 4 dismissal was without prejudice. (Doc. 81.) While its motion was pending, Blackhawk 5 also lodged on the Court’s docket a motion to disqualify Quinn Emmanuel from 6 representing Defendants (Doc. 85), subject to the Court’s resolution of Blackhawk’s 7 motion to seal (Doc. 84). Defendants then moved to strike Blackhawk’s motion to 8 disqualify for failure to serve. (Doc. 87.) 9 II. 10 The Court’s dismissal was without prejudice. The Court granted Defendants’ 11 motions to dismiss because Blackhawk lacked standing to assert correction of inventorship 12 claims under 35 U.S.C. § 256 (Doc. 78 at 10–15), and because its state law breach of 13 contract claims did not “arise under” the federal patent laws for purposes of 28 U.S.C. 14 § 1338, (Doc. 78 at 15–20). The Court declined to give Blackhawk leave to amend because 15 Blackhawk had already twice amended its complaint and because it was unlikely 16 Blackhawk would be able to cure its standing deficiency. Nevertheless, dismissals for lack 17 of subject matter jurisdiction, including for want of standing, are ordinarily without 18 prejudice. See Fed. R. Civ. P. 41(b) (“Unless the dismissal order states otherwise . . . any 19 dismissal . . . except one for lack of jurisdiction . . . operates as an adjudication on the 20 merits.”); H.R. Techs., Inc. v. Astrotechnologies, Inc., 275 F.3d 1378, 1384 (Fed. Cir. 2002) 21 (“Because lack of standing is not an issue that goes to the merits of the underlying 22 patent issues, a dismissal of a complaint for lack of standing would not normally be 23 expected to be made with prejudice.”); Fieldturf, Inc. v. Sw. Recreational Industries, 24 Inc., 357 F.3d 1266, 1269 (Fed. Cir. 2004) (“Ordinarily, dismissal for lack of standing 25 is without prejudice.”); Siler v. Dillingham Ship Repair, 288 F. App’x 400, 401 (9th Cir. 26 2008) (“[W]e vacate the district court’s judgment to the extent it dismissed the complaint 27 with prejudice, and remand for entry of judgment dismissing the complaint without 28 prejudice because dismissal for lack of subject[-]matter jurisdiction is not an adjudication 1 on the merits.”); see also 18A Charles Alan Wright & Arthur R. Miller, Federal Practice 2 and Procedure § 4436 (3d ed. 2022) (“[A dismissal for want of justiciability] should 3 preclude relitigation of the very issue of justiciability actually determined, but does not 4 preclude a second action on the same claim if the justiciability problem can be 5 overcome.”); Sensory Neurostimulation, Inc. v. Azar, 977 F.3d 969, 977 (9th Cir. 2020) 6 (affirming dismissal “without prejudice, and without leave to amend” for lack of subject 7 matter jurisdiction under Fed. R. Civ. P. 12(b)(1)). 8 While a district court may, in some instances, enter a dismissal for want of standing 9 with prejudice, see, e.g., Fieldturf, 357 F.3d at 1269 (“On occasion . . . a dismissal with 10 prejudice is appropriate, especially where it is plainly unlikely that the plaintiff will be able 11 to cure the standing problem.”); Sicom Sys., Ltd. v. Agilent Techs., Inc., 427 F.3d 971, 980 12 (Fed. Cir. 2005) (affirming dismissal with prejudice where plaintiff “already had a chance 13 to cure the defect and failed”); Ashurst Land & Cattle, LLC v. Rancho Mountain 14 Properties, Inc., 609 F. App’x 500, 501 (9th Cir. 2015) (holding the “district court did not 15 abuse its discretion by dismissing Plaintiffs’ claims with prejudice” because “Plaintiffs 16 were already afforded an opportunity to amend their complaint”), the Court declines to do 17 so in this case. Accordingly, the Court will grant Blackhawk’s motion to amend the 18 judgment to clarify that its dismissal was without prejudice. 20 The Court will not address the parties’ other pending motions. As described above, 21 the Court has already held that it lacks subject matter jurisdiction over the parties’ 22 underlying controversy. Thus, by extension, the Court lacks jurisdiction to address 23 the parties’ collateral motions. See Willy v. Coastal Corp., 503 U.S. 131, 137–39 (1992) 24 (“A final determination of lack of subject-matter jurisdiction of a case in a federal court, 25 of course, precludes further adjudication of it.”). While a federal court may consider certain 26 collateral issues after an action is no longer pending, see Cooter & Gell v. Hartmax 27 Corp., 496 U.S. 384, 395 (1990), the scope of a court’s authority to do so is rather 28 limited. Such authority has generally been found to extend only to such matters as 1 || motions for costs or attorneys’ fees, motions for sanctions under Rule 11, and contempt 2|| adjudications. See id. at 395-96. The parties’ remaining motions do not fall into any of || these established categories. The Court will therefore deny the motions, without prejudice. 4 IV. 5 Accordingly, 6 IT IS ORDERED granting Plaintiff's Motion to Amend Judgment Pursuant to 7\| Fed. R. Civ. P. 59(e) (Doc. 81). The Court’s Order (Doc. 78) is hereby amended at page 8 || 20, lines 23-24, to reflect that Defendants’ motions to dismiss for lack of subject matter jurisdiction (Docs. 58, 59) are granted without leave to amend and without prejudice.
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