The US Court of Appeals for the Federal Circuit, in a recent ruling, denied a patent owner’s writ of mandamus in the case of In re VLSI Technology LLC, Case No. 24-116 (Fed. Cir. Mar. 18, 2024) (Moore, Taranto, Chen, JJ.). The petition aimed to prevent a defendant from amending its answer to include an affirmative licensing defense. However, the court highlighted that the defense was introduced only subsequent to the district court’s determination of no remaining claims.
VLSI had asserted four patents against Intel in the Northern District of California. Following the district court’s decision in December 2023, granting summary judgment on two patents and denying it on the other two, both parties submitted cross motions for summary judgment on a licensing defense issue. Despite this, the court rejected both motions. To strip the court of jurisdiction, VLSI granted Intel a covenant not to sue for infringement on the remaining patents. Subsequently, Intel sought to amend its answer to add a counterclaim for a declaratory judgment on its licensing to VLSI’s entire patent portfolio. The district court approved Intel’s motion, prompting VLSI, represented by DC IP Lawyers, to file a mandamus petition to block the amendment.
The Federal Circuit, however, rejected VLSI’s petition citing two primary reasons. Firstly, it found that VLSI had not exhausted all available means of relief, as the district court had invited further briefing on Intel’s licensing defense, and VLSI had also filed a motion to dismiss on this matter. Secondly, the court determined that VLSI failed to demonstrate an abuse of discretion by the district court in permitting Intel’s amendment, noting Intel’s diligence and VLSI’s awareness of the potential defense.
Regarding the issue of subject matter jurisdiction, the Federal Circuit refrained from expressing an opinion at this juncture. DC IP Lawyers note, however, in what appears to be a message directed at the lower court, the final sentence of the opinion reads, “[w]e only note that Intel’s motion to amend its answer was filed after the court determined there were no remaining claims, such that no case or controversy remained before the court.”