Tuesday, January 07, 2014

Intervenor Motorola loses on motion at CAFC in Microsoft v. ITC

The issue in Microsoft v. ITC : Motorola contends that the dispute over the ’133 patent is moot because (as Microsoft and Motorola agree) the patent expired on December 13, 2013, and that mootness automatically requires the requested partial dismissal and vacatur.

First, we conclude that the case is not moot: there remains a live controversy. As Motorola explained in its Statement of Related Cases, Br. for Intervenor Motorola Mobility at ix, there is a pending case in the Western District of Washington in which Microsoft alleges in- fringement of the ’133 patent by Motorola and seeks damages. Microsoft Corp. v. Motorola, Inc., Case No. 2:10-CV-01577-RSM (W.D. Wash. filed Oct. 1, 2010). With the agreement of the parties, the district court stayed that case pending resolution of the Commission proceeding here, precisely because it “involves the same issues involved in the proceeding before the Commission.” 28 U.S.C. § 1659. Our ruling on the ’133 patent has a concrete legal effect on the Microsoft-Motorola dispute over the same issues in the pending Washington litiga- tion. Powertech Tech. Inc. v. Tessera, Inc., 660 F.3d 1301, 1308 (Fed. Cir. 2011) (this court’s rulings in cases coming from the Commission have precedential effect on the parties in related litigation).


It does not matter for the constitutional sufficiency of this controversy whether the present proceeding produces a judgment granting monetary, conduct-ordering, or other coercive relief, whether within this court or on remand to the Commission. Such relief is not a constitutional re- quirement, as has been established since the Supreme Court approved of declaratory-judgment actions concern- ing the interpretation of insurance policies or clarification of other legal rights. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126-27 (2007); Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240-41, 264 (1937); 10B C. WRIGHT ET AL., FEDERAL PRACTICE AND PROCEDURE § 2757 (3d ed. 2013). Here, there are concrete collateral conse- quences of our decision—beyond the relief available in this proceeding. It would “strain the concepts of moot- ness” to deem the ’133 patent issues moot when they are presented in a pending parallel case between two of the parties disputing them here. Bank of Marin v. England, 385 U.S. 99, 100-01 (1966) (collateral consequence for other litigation kept controversy alive); see Minnesota Mining & Mfg. Co. v. Barr Labs, Inc., 289 F.3d 775, 780- 81 (Fed. Cir. 2002) (no mootness if collateral consequences are not unduly conjectural).


Second, even if the present case were moot as to the ’133 patent, vacatur would not be warranted. Motorola’s sole argument is that vacatur of an already-rendered decision is automatic upon finding mootness. But the Supreme Court’s decision in U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18 (1994), confirms that, contrary to Motorola’s position, what action to take regarding an issued decision is not automatically deter- mined by mootness, but is a matter of equitable discretion (to be exercised, like all discretion, within governing legal constraints, see Martin v. Franklin Capital Corp., 546 U.S. 132, 139 (2005)).
In U.S. Bancorp, the Court held that, upon mootness, an Article III court may not decide the merits of the case, 513 U.S. at 20-22, but that it is a matter of discretion, governed by equitable principles, whether an Article III reviewing court should vacate the judgment of a reviewed court and order dismissal, id. at 21-25. The Court then held that the reviewing court should not do so merely because mootness results from a settlement that calls for vacatur. Id. at 29. The Court indicated, too, that a dis- trict court may consider whether to vacate its own judg- ment under Fed. R. Civ. P. 60(b). U.S. Bancorp, 513 U.S. at 29.
The Court’s holding and analysis effectively establish that mootness does not automatically require vacatur of a previously made decision, which, instead, is a matter of reasoned discretion. (...)

In addition, the great weight of authority, through holdings or analysis, supports not only (a) treating the question of what a court should do when mootness arises after decision as subject to equitable and pragmatic considerations, but (b) refusing to disturb a decision when an issue becomes moot only after denial of rehearing on a controversy-specific issue that is not within the normal standards for Supreme Court review, so that no further decision is needed, available as of right, or likely. See Finberg v. Sullivan, 658 F.2d 93, 96 n.4 (3d Cir. 1983) (en banc); Humphreys v. Drug Enforcement Admin., 105 F.3d 112, 114-16 (3d Cir. 1996); Bastien v. Office of Sen. Ben Nighthorse Campbell, 409 F.3d 1234, 1235-36 (10th Cir. 2005); In re Grand Jury Investigation, 399 F.3d 527, 529 n.1 (2d Cir. 2005); United States v. Payton, 593 F.3d 881, 883-85 (9th Cir. 2010); see also TiVo Inc. v. Echostar Corp., 429 F. App’x 975 (Fed. Cir. 2011) (en banc) (non- precedential order). That authority supports denial of Motorola’s motion here: Motorola does not deny that the matter was a live controversy when this court decided it; nothing remained upon denial of rehearing but the minis- terial act of issuance of the mandate by the clerk’s office; the ’133 patent issues are far from being certworthy, so that there is neither entitlement to nor a substantial chance of further review that disturbs the patent-specific merits rulings; and the fully considered decision matters for party-specific collateral litigation, as indicated by Motorola’s course of conduct in seeking to alter the ruling on rehearing (without suggesting mootness) and in seek- ing the present vacatur. In these circumstances, we would find vacatur unwarranted even if the dispute were moot. Compare In re Pattullo, 271 F.3d 898 (9th Cir. 2001) (vacating where event determined to moot case occurred before appellate decision was rendered); Clarke v. United States, 915 F.2d 699, 712 (D.C. Cir. 1990) (vacating where dispute became moot while rehearing was pending); In re Ghandtchi, 705 F.2d 1315 (11th Cir. 1983) (vacating where case became moot while time to seek rehearing remained); United States v. Caraway, 483 F.2d 215 (5th Cir. 1973) (same).
Two final points. We see no need to dismiss the ap- peal in part. As explained, we do not think that the dispute is moot even now. Even if it were, we would not vacate the decision for the reasons given; and Motorola has not explained how dismissal alone matters or why it is required where vacatur is not. In addition, even with- out this Order, but certainly with it, the Commission is not compelled to take action that the post-decision expira- tion of the patent now makes unlawful. See, e.g., Tronzo v. Biomet, Inc., 236 F.3d 1342, 1349 (Fed. Cir. 2001).

Judge Prost, concurs:

However, I agree with the majority that whether we should dismiss the appeal or vacate our ruling is a discre- tionary matter, and I would deny Motorola’s motion on that basis. In addition to the reasons provided by the majority, I believe that the existence of the Washington case weighs strongly in favor of exercising our discretion not to vacate our opinion, as the parties would be required to “start all over again” with respect to the disputes already resolved therein. Bank of Marin v. England, 385 U.S. 99, 100-01 (1966).


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