WiLAN v. Alcatel-Lucent: Parties Agree to Dismiss Dispute and Vacate Claim Construction Order But District Court Declines to Vacate the Claim Construction Order

October 2, 2013

WiLAN USA, Inc. ("Wi-LAN") filed a patent infringement action against Alcatel-Lucent USA Inc. ("Alcatel-Lucent"). After a lengthy claim construction order, the parties filed a joint motion to vacate the claim construction order and dismiss the pending lawsuit. The motion consisted of a single page and contained no points and authorities in support of the motion.

The district court was not impressed by the single page motion, which did not include a memorandum of law as required by the local rules. "The one-page Motion, which seeks in part a vacatur of the 75-page Order [ECF No. 141] of September 9, 2013 ("September 9 Order") on claim construction following a day-long Markman hearing, is unaccompanied by a memorandum of law. See Local Rule 7.1(a)(1)."

The district court also noted that Wi-LAN had filed several patent infringement actions in the district and several of those remained pending. " The Court notes that since January 2012, Plaintiffs have filed a total of ten patent suits in this District, several of which are still pending."

As a result, the district court found that the judicial precedent would be useful and the claim construction order was not property of private litigants. "'Judicial precedents are presumptively correct and valuable to the legal community as a whole. They are not merely the property of private litigants and should stand unless a court concludes that the public interest would be served by a vacatur.'" U.S. Bancorp Mortg. v. Bonner Mall P'ship, 513 U.S. 18, 26-27 (1994) (quoting Izumi Seimitsu Kogyo Kabushiki Kaisha v. U.S. Philips Corp., 510 U.S. 27, 40 (1993) (Stevens, J., dissenting)); see also Valero Terrestrial Corp. v. Paige, 211 F.3d 112, 117 (4th Cir. 2000) ("That the respective vacatur powers of the appellate [] and the district courts derive from different sources . . . does not necessarily mean that the standards pursuant to which those powers are exercised are different. In the circumstance of vacatur due to mootness . . . we are satisfied that the standards under 28 U.S.C. ยง 2106 and Rule 60(b) are essentially the same.").

Finally, the district court concluded that the parties had the right to seek to have the district court vacate the order to prevent the collateral estoppel impact of the order, but concluded that such an order would be inappropriate, particularly given the failure to set forth a reasoned analysis of why that should be done. " Certainly the parties have the right to seek to have the Court vacate the September 9 Order to prevent that decision from having collateral estoppel effects in other litigation. See Dana v. E.S. Originals, Inc., 342 F.3d 1320, 1328 (Fed. Cir. 2003) (Dyk, J., concurring). And while professional courtesy would certainly call for a reasoned analysis from the parties applying the standards of Federal Rule of Civil Procedure 60(b) to such a request -- particularly given the judicial effort the parties demanded and received -- the Local Rules require it."

Accordingly, the district denied the motion to vacate the claim construction order and only granted the parties' request to dismiss the action.

Wi-LAN USA, Inc. v. Alcatel-Lucent USA Inc., Case No. 12-23568-CV-Altonaga (S.D. Fla. Sept. 18, 2013)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.