Docket No. 2015-2094
REYNA, CHEN, STOLL
August 1, 2016
Brief Summary: DC decision denying Murata’s motion to lift a stay while IPR was in progress affirmed. DC denial of Murata’s motion for a preliminary injunction vacated and remanded because of “the absence of any analysis whatsoever” regarding why it was denied.
Summary: Murata appealed DC denial of its petition to lift the stay put in place at Daifuku’s request as IPR regarding certain patents-at-issue (relating to automated material handling systems such as “robotic vehicles suspended on tracks from the ceilings of semiconductor cleanrooms to move and manipulate semiconductory components”) was underway. Murata sued Daifuku for infringement of one group of patents (the “Original Patents”) and Daifuku filed a request for IPR regarding the same. The DC agreed to stay the litigation pending the IPR results. Murata later amended its complaint to include the “Additional Patents”, not included in the IPR. The DC stayed the entire case, however, but allowed Murata to move to lift the stay with respect to the Additional Patents, which was denied. Before the DC’s decision regarding the stay, Murata also filed for a preliminary injunction which was denied as untimely filed. Both motions were denied “in a single order” (“litigating the Original Patents and Additional Patents separately would make ‘no sense’” and noting the “the Additional Patents now faced potential IPR proceedings”), and appealed here. The FC panel noted that it “typically do[es] not have interlocutory jurisdiction over a [DC’s] decision to stay or not stay a case” (Intell. Ventures, FC 2015) but that since the motions were denied “in a single order, those decisions are inextricably linked and we exercise our discretion to consider” the decision (Proctor & Gamble, FC 2008). It first found no error with the DC decision not to lift the stay (reviewed for an abuse of discretion). Murata argued the DC relied on a four-factor test including the “burden of litigation” factor and should have relied on the three-factor test not including that factor but the FC panel disagreed since “[t]he ability to stay cases is an exercise of a court’s inherent power to manage its own docket” (Proctor & Gamble, FC 2008; Gould, FC 1983) and it has “discretionary prerogative to balance considerations beyond those captured by the three-factor stay test.” It agreed, however, that the DC erred in “summarily denying [Murata’s] motion for preliminary injunction” because “[i]n granting or refusing an interlocutory injunction, the court must…state the findings and conclusions that support its action” (FRCP Rule 52(a)(2)) and did not (“In the absence of any analysis whatsoever, we cannot review the opinion for an abuse of discretion.” H&R Block, 8th Cir. 2014)). It did note that “a ‘limited analysis may support a trial court’s denial of a preliminary injunction’ so long as the [DC] concludes that some of the requisite preliminary injunction factors disfavor the movant” (Polymer Techs., FC 1996) (“We simply ask that the [DC] explain its views of why a preliminary injunction would or would not be appropriate at this time.”) Thus, the denial of Murata’s motion for preliminary injunction was vacated and remanded for the DC to properly address.