Ultratec, Inc. v. Captioncall, LLC

611 F. App'x 720
CourtCourt of Appeals for the Federal Circuit
DecidedJune 30, 2015
DocketNos. 2015-1694, 2015-1759, 2015-1760
StatusPublished

This text of 611 F. App'x 720 (Ultratec, Inc. v. Captioncall, LLC) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ultratec, Inc. v. Captioncall, LLC, 611 F. App'x 720 (Fed. Cir. 2015).

Opinion

ON MOTION AND PETITION

ORDER

NEWMAN, Circuit Judge.

This matter reaches us from the post-judgment phase of a patent infringement suit. The plaintiffs in this case, Ultratec, Inc. and its sister company CapTel, Inc. (“Petitioners”), filed suit against their competitors, Sorenson Communications, Inc. and CaptionCall, LLC (“Respondents”). Petitioners tried 13 infringement claims to a jury. In October 2014, the jury found in favor of Petitioners and assessed damages of 44 million dollars for past infringement.

In March 2015, while the parties were briefing various post-judgment motions, the Patent Trial and Appeal Board, in a parallel inter partes review, issued eight final written decisions invalidating all but one of the patent claims tried.1 At that point, although it had previously rejected such relief twice before, the district court granted a stay of the litigation pending a final inter partes decision on the validity of all the claims-in-the-suit, including the exhaustion of any appeals.

[721]*721While there had been significant progress made in the case, the district court explained that a review of the 14 post-verdict motions, which covered “almost every contested issue in this case, including infringement, invalidity, and damages,” led it to conclude that a stay “would provide important guidance from the patent office, simplify the case, avoid needless waste of judicial resources and prevent inconsistent results between inter partes review and this litigation.” Ultratec, Inc. v. Sorenson Comm’ns, Inc., No. 3:13-cv-00346-bbc, slip op. 7-8, 2015 WL 2248437 (W.D.Wise. May 13, 2015). And, concluded that “the potential benefits of a stay outweighed any potential prejudice to plaintiffs at this time,” id. at 11. Petitioners then appealed to this court and filed a petition for a writ of mandamus.2

We first consider our jurisdiction; and in doing so, conclude that our authority to hear this case extends only to Petitioners’ request for mandamus relief. It is well established that stay orders are not ordinarily immediately appealable. See Gulf-stream Aerospace Corp. v. Mayacamas Corp., 485 U.S. 271, 277-78, 108 S.Ct. 1133, 99 L.Ed.2d 296 (1988); Spread Spectrum Screening LLC v. Eastman Kodak Co., 657 F.3d 1349, 1354 (Fed.Cir.2011). While there are certain exceptions to this general rule, Petitioners have not established that any apply here.

Appeals from an order granting a stay are permitted if it has the effect of putting the plaintiff “effectively out of court.” Moses H. Cone Mem’l Hosp. v. Mercury Constr. Corp., 460 U.S. 1, 10, 103 S.Ct. 927, 74 L.Ed.2d 765 (1983). It has not been shown in this case, however, that the stay has the effect of “surrendering the federal action to state court or to an administrative body.” Spread Spectrum Screening, 657 F.3d at 1355; Gould v. Control Laser Corp., 705 F.2d 1340, 1341-42 (Fed.Cir.1983) (“stays to enable reexamination do not foreclose review on the merits by a federal court.”).

An appeal is also allowed from an order granting a stay if it has the “practical effect of granting or denying injunctions and ha[s] serious, perhaps irreparable, consequence.” Gulfstream Aerospace, 485 U.S. at 287-88, 108 S.Ct. 1133 (internal citation and quotation marks omitted); Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 846 (Fed.Cir.2008). But the papers submitted do not point to any specific evidence of such consequence; nor is it clear that the district court’s actions effectively mooted or amounted to a refusal to act on Petitioners’ motion for a permanent injunction. Id.

Finally, Petitioners assert that they may appeal under the collateral order doctrine. But this “ ‘small class’ of collateral rulings” insist upon “important questions separate from the merits” being lost absent an immediate appeal, Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100, 106, 130 S.Ct. 599, 175 L.Ed.2d 458 (2009) (citations omitted), and Petitioners do not offer why the ruling here is “important” in the. relevant sense or cite authority that a stay order satisfies the conditions of the collateral order doctrine. We therefore dismiss the above-captioned appeals and consider the matter appropriate for mandamus review.

Turning to the merits, we consider Petitioners’ arguments that the stay was improper in light of several established background principles. First, a" district court is given considerable leeway in the exercise of its judgment in granting a stay, which calls for the weighing of “competing interests and maintain[ing] an even balance.” [722]*722Landis v. N. Am. Co., 299 U.S. 248, 254-55, 57 S.Ct. 168, 81 L.Ed. 153 (1936); Cherokee Nation of Okla. v. United States, 124 F.3d 1413, 1416 (Fed.Cir.1997) (citations omitted) (“When and how to stay proceedings is within the sound discretion of the trial court.”).

Second, guidance from related PTO proceedings can play a critical role in determining-whether to stay proceedings. See VirtualAgility Inc. v. Salesforce.com, 759 F.3d 1307 (Fed.Cir.2014); Slip Track Sys., Inc. v. Metal Lite, Inc., 159 F.3d 1337, 1341 (Fed.Cir.1998) (“The stay was justified in that case because the outcome of the reexamination would be likely to assist the court in determining patent validity and, if the claims were canceled in the reexamination, would eliminate the need to try the infringement issue.”).

Third, in addition to the highly discretionary review of stay rulings, Petitioners here are seeking mandamus relief, a “drastic” remedy to be invoked in “extraordinary situations” amounting to a “judicial usurpation of power,” Kerr v. U.S. Dist. Ct. for the N. Dist. Cal., 426 U.S. 394, 402, 96 S.Ct. 2119, 48 L.Ed.2d 725 (1976) (internal quotations and citations omitted), or a “clear abuse of discretion.” Bankers Life & Cas. Co. v. Holland, 346 U.S. 379, 383, 74 S.Ct. 145, 98 L.Ed. 106 (1953); In re Calmar, Inc., 854 F.2d 461, 464 (Fed.Cir.1988).

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
611 F. App'x 720, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ultratec-inc-v-captioncall-llc-cafc-2015.