United States District Court, N.D. California
ORDER DENYING DEFENDANTS' MOTION FOR RELIEF AND
AWARDING COSTS DOCKET NO. 227
M. CHEN, UNITED STATES DISTRICT JUDGE.
Capella Photonics, Inc. brought patent infringement claims
against four Defendants. In 2014, one of the Defendants filed
a petition with the Patent Trial and Appeal Board
(“PTAB”) seeking institution of inter
partes review on the challenged claims. After the claims
were cancelled by the PTAB (an outcome affirmed by the
Federal Circuit), this Court granted Plaintiff's Motion
to Dismiss Plaintiffs' claims without prejudice and
dismissed Defendant Ciena's counterclaims without
prejudice (on September 6, 2019). The Court also denied
Defendants' request to be declared prevailing parties
and, as a result, declined to award Defendants statutory
costs. See Docket No. 226. Following a decision by
the Federal Circuit on October 9, 2019 (in which that court
affirmed the award of prevailing party status and statutory
costs in a case factually similar to the instant case),
Defendants filed a Motion for Relief from an Order and a
Renewed Request to Be Declared Prevailing Parties and Awarded
Costs. See Docket No. 227.
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, Docket No. 221. 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 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 from the Southern District of Florida. See
Order Granting Defendants' Motion to Transfer, Docket No.
March 2015, the Court stayed this case pending the PTAB's
IPR Proceedings. Docket No. 172. Between January 2016 and
October 2016, the PTAB 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. This
effectively eliminated all the claims asserted by Plaintiff
in the instant case. Other claims of the ‘368 and
‘678 patents were not adjudicated by the PTAB.
“[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).
then brought a Motion to Dismiss Actions Without Prejudice as
Moot and for Lack of Jurisdiction. See Docket No.
221. Plaintiff's contention was 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 cancelled, these actions
are moot and the Court no longer has subject matter
jurisdiction.” Id. at 3. Defendants argued
that the matter should be dismissed with prejudice.
Defendants' Opposition to Motion to Dismiss at 1, Docket
No. 223. Defendants requested 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. On September 6, 2019, the
Court granted Plaintiff's Motion to Dismiss
Plaintiffs' claims without prejudice and denied
Defendants' request to be declared prevailing parties; as
a result, it declined to award Defendants statutory costs.
See Docket No. 226.
60(b) permits a court to provide relief from final judgment,
order, or proceeding on several different grounds.
Fed.R.Civ.P. 60(b). Rule 60(b)(6) specifically provides that
a court may grant relief from a final judgment, order, or
proceeding for “any other reason that justifies
relief.” Fed.R.Civ.P. 60(b)(6). This catch-all
provision has been narrowly construed. Hoffman v.
Lloyd, No. C-12-0198 EMC, 2012 WL 4857799, at *3 (N.D.
Cal. Oct. 11, 2012). Moreover, relief under Rule 60(b)(6) is
reserved for cases in which there are extraordinary
circumstances. See Lal v. State of Cal., 610 F.3d
518, 524 (9th Cir. 2010) (stating that Rule 60(b)(6) is used
“sparingly as an equitable remedy to prevent manifest
injustice” and explaining that to receive relief under
the rule “a party must demonstrate ‘extraordinary
circumstances which prevented or rendered him unable to
prosecute [his case]'”).
change in law may sometimes “constitute a ground for
re-opening a final judgment.” Styers v. Ryan,
632 Fed.Appx. 329, 331 (9th Cir. 2015); see also Henson
v. Fid. Nat'l Fin., Inc., 943 F.3d 434, 444 (9th
Cir. 2019) (“We have previously recognized that a
change in the controlling law can- but does not
always-provide a sufficient basis for granting relief under
Rule 60(b)(6).”). However, “a subsequent change
in the law cannot itself constitute an extraordinary
circumstance sufficient to entitle the district court to
vacate a final judgment on its own initiative.”
Clifton v. Attorney Gen. of State of Cal., 997 F.2d
660, 665 (9th Cir. 1993). Instead, a district court must
weigh several factors:
To decide whether a change in law constitutes a ground for
reopening a final judgment, a court must find extraordinary
circumstances and may consider whether (1) the intervening
change in law overruled an otherwise settled legal precedent
in petitioner's favor; (2) the petitioner was diligent in
pursuing the issue; (3) the final judgment caused one or more
of the parties to change his position in reliance on the
judgment; (4) there is delay between the finality of the
judgment and the motion for Rule 60(b)(6) relief; (5) there
is a close connection between the original and intervening
decisions at issue in the Rule 60(b) motion; and (6) relief
from judgment would upset the principles of comity governing
the interaction between coordinate sovereign judicial
Styers, 632 Fed.Appx. at 331 (citing Phelps v.
Alameida,569 F.3d 1120, 1135-40 (9th Cir.2009); see
also Henson, 943 F.3d at 440 (finding it appropriate to
apply the Phelps factors in a non-habeas context).
The Ninth Circuit has also emphasized that, in addition to
these factors, “courts must consider all of the
relevant circumstances surrounding the specific motion before
the court in ...