Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Capella Photonics, Inc. v. Cisco Systems, Inc.

United States District Court, N.D. California

September 6, 2019

CAPELLA PHOTONICS, INC., Plaintiff,
v.
CISCO SYSTEMS INC, et al., Defendants.

          ORDER GRANTING PLAINTIFF'S MOTION TO DISMISS WITHOUT PREJUDICE DOCKET NO. 221

          EDWARD M. CHEN UNITED STATES DISTRICT JUDGE.

         Plaintiff Capella Photonics, Inc. brought patent infringement claims against four Defendants in the Southern District of Florida. Those cases were consolidated and transferred to the Northern District of California. In 2014, one of the Defendants filed a petition with the Patent Trial and Appeal Board seeking institution of inter partes review on the challenged claims. In March 2015, the Court stayed this case pending the PTAB's IPR Proceedings, and after the claims were cancelled by the PTAB (an outcome affirmed by the Federal Circuit), this Court lifted the stay in June 2019. Plaintiff now brings a Motion to Dismiss Without Prejudice, challenging the Court's subject matter jurisdiction and alleging that the claims are now moot. Defendants seek dismissal of Plaintiff's claims with prejudice, summary judgment in favor of Defendants, and the awarding of statutory costs.

         I. BACKGROUND

         According to Plaintiff, “Capella is a pioneer of optical switching technology used in optical transmission networks by the telephone, Internet, and cable television industries.” Motion to Dismiss (“MTD”) at 3. The company has “an extensive of [sic] portfolio of patents on optical switching devices.” Id. This case is a consolidated patent infringement case that was originally filed as several cases in the Southern District of Florida in 2014. See Docket No. 1; Docket No. 111. Plaintiff “alleged that each respective Defendant infringed U.S. Patent Nos. RE42, 368 (the ‘‘368 Patent') and RE42, 678 (the ‘‘678 Patent')[.]” Opposition to Motion to Stay or in the Alternative to Amend at 6, Docket No. 209. Plaintiff served infringement contentions on those patents, and Defendants served invalidity contentions. Id. On July 15, 2014, one of the Defendants filed a petition with the Patent Trial and Appeal Board (“PTAB”) seeking institution of inter partes review (“IPR”) proceedings on the then asserted claims. Id. In July 2014, the case was transferred to this Court. See Order Granting Defendants' Motion to Transfer, Docket No. 77.

         In March 2015, the Court stayed this case pending the PTAB's IPR Proceedings. Docket No. 172. Between January 2016 and October 2016, it was determined that all of Plaintiff's claims identified in its preliminary infringement contentions for the ‘368 and ‘678 patents were invalid. Motion to Stay or in the Alternative to Amend at 7 (“MTS”), Docket No. 205. The Federal Circuit affirmed that determination in February 2018. MTS at 7. Plaintiff then exhausted its appeals on November 5, 2018 when the Supreme Court denied its petition for writ of certiorari. Id. “On December 10, 2018, the PTO issued IPR certificates cancelling claims 1-6, 9-13 and 15-22 of the ‘368 Patent and claims 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53 and 61-65 of the ‘678 Patent.” MTS at 17; Becker Declaration ¶ 11, Docket No. 205-1. Other claims of those patents were not adjudicated.

         Meanwhile, “[o]n June 29, 2018, before the PTO cancelled the challenged claims, ” Plaintiff filed reissue applications. MTS at 7. Plaintiff asserts that the “[c]laims in these newly reissued patents that are substantially identical with the original claims will constitute a continuation of the original Reissue Patents-in-Suit and have effect continuously from their original date of issuance.” Id. at 2. Plaintiff asked the Court to extend the imposed stay until after a determination on the reissue application. On June 4, 2019, the Court denied Plaintiff's Motion to Extend Stay and its subsequent request to amend its infringement contentions to include claims not brought in the IPR proceedings. Docket No. 219. The Court also denied Defendants' motion to dismiss for failure to prosecute pursuant to Federal Rule of Civil Procedure 41(b). Id.

         Plaintiff now brings a Motion to Dismiss Actions Without Prejudice as Moot and for Lack of Jurisdiction (“MTD”). Docket No. 221. Plaintiff contends that “[a]s a result of the cancellation of all of Capella's asserted patent claims and this Court's subsequent rulings prohibiting Capella from adding new infringement claims of the Patents-in-Suit that have not been canceled, these actions are moot and the Court no longer has subject matter jurisdiction.” Id. at 3. It argues that “all pending claims and counterclaims . . . should be dismissed without prejudice for lack of subject matter jurisdiction/mootness.” MTD at 7. Defendants, on the other hand, believe that the matter should be dismissed with prejudice. Defendants' Opposition to Motion to Dismiss (“Opposition”) at 1, Docket No. 223. Defendants request that the Court “deny Plaintiff's motion and enter summary and/or final judgment in Defendants' favor on Plaintiff's infringement counts pursuant to Federal Rules of Civil Procedure 54, 56, and/or 58 and award statutory costs to Defendants.” Id.

         II. DISCUSSION

         A. Legal Standard

         “A federal court lacks jurisdiction to hear a case that is moot.” Bishop Paiute Tribe v. Inyo Cty., 863 F.3d 1144, 1155 (9th Cir. 2017) (citing Foster v. Carson, 347 F.3d 742, 744 (9th Cir. 2003)). “If there is no longer a possibility that an appellant can obtain relief for his claim, that claim is moot and must be dismissed for lack of jurisdiction.” Foster, 347 F.3d at 745 (citing Ruvalcaba v. City of L.A., 167 F.3d 514, 521 (9th Cir.1999)); see also Maya v. Centex Corp., 658 F.3d 1060, 1067 (9th Cir. 2011) (The “lack of Article III standing requires dismissal for lack of subject matter jurisdiction . . . .” (emphasis removed)). In patent cases, “there is no bright-line rule for determining whether an action satisfies the case or controversy requirement”; instead a Court must evaluate whether “the dispute be definite and concrete, touching the legal relations of parties having adverse legal interests; and that it be real and substantial and admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.” Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1282 (Fed. Cir. 2012) (citing MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007)).

         B. Analysis

         1. Mootness

         The first question raised by this motion is whether Plaintiff's claims are moot. Generally, when claims challenged in a patent infringement case are cancelled, the Plaintiff's claims become moot. Put simply, “suits based on cancelled claims must be dismissed.” Fresenius USA, Inc. v. Baxter Int'l, Inc., 721 F.3d 1330, 1338 (Fed. Cir. 2013).

         As the Federal Circuit noted in Mylan Pharm. Inc. v. Research Corp. Techs., Inc., 914 F.3d 1366 (Fed. Cir. 2019), “there is no case or controversy regarding . . . cancelled claims.” Id. at 1369 (citing Fresenius, 721 F.3d at 1347, and noting that in Fresenius the “litigation became moot because of the cancellation of claims”); see also Target Training Int'l, Ltd. v. Extended Disc N. Am., Inc., 645 Fed.Appx. 1018, 1023 (Fed. Cir. 2016) (“Fresenius makes clear that ‘when a claim is cancelled, the patentee loses any cause of action based on that claim, and any pending litigation in which the claims are asserted becomes moot.'”); SHFL Entm't, Inc. v. DigiDeal Corp., 729 Fed.Appx. 931, 934 (Fed. Cir. 2018) (quoting same language from Freseniu ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.