United States District Court, N.D. California
ORDER GRANTING PLAINTIFF'S MOTION TO DISMISS
WITHOUT PREJUDICE DOCKET NO. 221
M. CHEN UNITED STATES DISTRICT JUDGE.
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.
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.
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.
“[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).
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
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)).
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).
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