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In re Princo Corporation

decided on March 1, 2007 by the Court of Appeals for the Federal Circuit

review by J. Matt Buchanan | published February 9, 2018 | updated February 17, 2018

tags: appellate procedure, choice of law, international trade commission, jurisdiction, mandamus, patent misuse, statutory construction, tying

In In re Princo Corporation, the Court of Appeals for the Federal Circuit considered a petition for writ of mandamus that required an interpretation of the statute providing for stays of district court patent infringement actions pending the outcome of proceedings before the International Trade Commission. The Court specifically addressed the question of when a district court's stay can properly be lifted. The Court determined that a stay instituted under 28 U.S.C. §1659 must continue until the Commission proceedings are no longer subject to judicial review. Thus, ITC-based stays of patent infringement actions must remain in force until all avenues of judicial review of the ITC proceeding have been exhausted. The Court's disposition of the petition clearly shows the extraordinary nature of mandamus relief — in addition to directing the district court to stay its proceedings, it vacated all orders issued by the lower court since the time of its improper denial of the motion to stay proceedings, effectively erasing a year and a half from the record.

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Notes

jurisdiction

Court of Appeals for the Federal Circuit - jurisdiction to issue writs of mandamus

The Court provides a detailed overview of the law establishing its jurisdiction to issue writs of mandamus. The Court notes everything from the general authority provided by the All Writs Act (28 U.S.C. §1651(a)) and Supreme Court precedent, to its own law holding that it “issues that would be properly before the Federal Circuit on appeal are no less within our jurisdiction when raised by extraordinary writ.” (internal quotations omitted) (citation omitted).

The Court noted that “our jurisdiction over writs of mandamus in patent cases is exclusive....”

choice of law

Interpretation of 28 U.S.C. §1659 in the context of a patent infringement suit is a matter of Federal Circuit law

The Court indicated that it applies its own law to requests for mandamus relief, “except to the extent that underlying substantive issues may be governed by regional circuit law.” (citation omitted). Here, the Court noted that the sole issue on appeal - the interpretation of 28 U.S.C. §1659 in the context of a patent infringement suit – is a matter of Federal Circuit law.

Accordingly, in this case, the Court applied its own law to all issues.

mandamus

Requirements for issuing of "the extraordinary remedy" that is the writ of mandamus

The Court noted that “[t]he writ [of mandamus] may only issue to confine an inferior court to a lawful exercise of its prescribed jurisdiction or to compel it to exercise its authority when it is its duty to do so.” (internal quotation omitted) (citation omitted) (emphasis added).

The burden on the petitioner when seeking mandamus is to demonstrate “that its right to issuance of the writ is clear and indisputable and that it lacks adequate alternative means to obtain the relief sought.” (internal quotations omitted) (citation omitted).

statutory construction

28 U.S.C. §1659 requires that a stay of district court proceedings continue until the International Trade Commission proceedings are no longer subject to judicial review

The case at hand has a convoluted history, involving actions before the ITC, an infringement action before a United States District Court, and several appeals to the Court of Appeals for the Federal Circuit. The Petitioner had successfully moved the district court to stay its proceedings under 28 U.S.C. §1659 while the ITC proceeding was ongoing. However, the district court lifted the stay after the ITC issued its ruling but before an appeal of that ruling was filed. The district court repeatedly denied Petitioner's motions (and renewed motions) to stay the proceedings during several rounds of back and forth between the district court and the Federal Circuit.

Ultimately, the district court finally dismissed the motion to stay, effectively determining that Petitioner was liable for patent infringement, reasoning that “there are no issues before the [Commission] that affect the resolution of this case.”

Petitioner then filed the its petition for a writ of mandamus asking the Federal Circuit to vacate the district court's order and stay the case pursuant to §1659 until the Commission's related proceedings are complete.

The sole issue raised by the petition is the interpretation of the phrase “until the determination of the Commission becomes final” in 28 U.S.C. §1659. The Court noted that this is a question of first impression: “We have not previously addressed whether the district court must continue to stay proceedings under §1659 after an initial decision by the full Commission.”

Conducting a classic statutory construction analysis, the Court reviewed the language of the statute itself, the legislative history, the legislative intent and purpose, and Supreme Court precedent on related statutory language. The Court concluded that “§1659 requires that the stay of district court proceedings continue until the Commission proceedings are no longer subject to judicial review.”

Here, because the Commission proceedings are still ongoing by way of their appeal, the Court reasoned that the Commission's ruling “has not yet become final.” To give effect to its holding, the Court directed the district court to stay its proceedings and vacated all orders issued after the filing of the motion to stay proceedings.