PartsRiver, Inc. v. Shopzilla, Inc. et al

Filing 278

ORDER by Judge Claudia Wilken DENYING PARTSRIVER, INC.S 260 MOTION TO VACATE JUDGMENT.(ndr, COURT STAFF) (Filed on 4/21/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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PARTSRIVER, INC.,

No. C 09-0811 CW

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Plaintiff,

ORDER DENYING
PARTSRIVER, INC.’S
MOTION TO VACATE
JUDGMENT
(Docket No. 260)

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v.
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SHOPZILLA, INC.; YAHOO! INC.; EBAY
INC.; AND MICROSOFT CORPORATION,

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Defendants.
/

United States District Court
For the Northern District of California

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SHOPZILLA, INC.; YAHOO! INC.; AND
MICROSOFT CORPORATION,

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Counterclaim-Plaintiffs,
v.
PARTSRIVER, INC.,
Counterclaim-Defendant.
/

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Plaintiff and Counterclaim-Defendant PartsRiver, Inc., moves

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to vacate the judgment in this action.

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Defendants and Counterclaim-Plaintiffs Shopzilla, Inc.; Yahoo!

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Inc.; and Microsoft Corporation (collectively, Defendants) oppose

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the motion.

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considered oral argument and the papers submitted by the parties,

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the Court DENIES PartsRiver’s motion.

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Defendant eBay, Inc., and

The motion was heard on March 17, 2011.

Having

BACKGROUND

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On October 3, 2007, PartsRiver initiated this action in the

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Eastern District of Texas, alleging that Defendants infringe its

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U.S. Patent No. 6,275,821 (’821 patent).

In November, 2007,

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Defendants moved to transfer the action to this judicial district.

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On October 28, 2008, while their motion to transfer was under

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submission, Defendants filed a request with the U.S. Patent and

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Trademark Office (PTO) for an ex parte reexamination of the ’821

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patent.

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claims 1 and 2 of the ’821 patent was necessary because they were

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anticipated and obvious based on prior art not cited or disclosed

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previously to the PTO.

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Defendants’ request for an ex parte reexamination.

United States District Court
For the Northern District of California

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Specifically, Defendants argued that reexamination of

On December 22, 2009, the PTO granted

On January 30, 2009, the Texas district court granted
Defendants’ motion to transfer venue.
On May 1, 2009, the PTO issued its first office action on the

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reexamination, indicating that claims 1 and 2 were subject to

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rejection based on anticipation by prior art.

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the PTO issued a final office action rejecting claims 1 and 2.

On June 18, 2009,

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Meanwhile, on May 28, 2009, Defendants moved for summary

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judgment of non-infringement and of invalidity based on the on-sale

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bar, 35 U.S.C. § 102(b).

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summary judgment in favor of Defendants, concluding that claims 1

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and 2 were invalid based on the on-sale bar.

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2009, PartsRiver appealed this decision to the Federal Circuit.

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On August 21, 2009, the Court granted

On September 18,

On November 3, 2009, after two failed attempts to amend the

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’821 patent to avoid the PTO’s finding of invalidity based on

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anticipation, PartsRiver appealed that decision to the Board of

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Patent Appeals and Interferences (BPAI).

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PartsRiver’s appeal, the patent examiner suggested that limiting

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language PartsRiver added to another claim of the ’821 patent, if

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In the PTO’s Answer to

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inserted into claim 1, could save it from invalidity.

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amendment would also affect claim 2, which incorporated claim 1.

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On May 20, 2010, PartsRiver filed amendments to claim 1.

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submission to the PTO, PartsRiver stated,

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This

In its

Claim 1 is now believed to reflect, albeit explicitly,
the legal scope of claim 1 as previously issued. As
such, although the text of claim 1 has been altered by
amendment, the claim scope is legally identical to that
of originally issued claim 1. This change in language
has been adopted for the sole purpose of terminating the
present reexamination to avoid lengthy appeal
proceedings.

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Hansen Decl., Ex. C., at 8.

On June 24, 2010, the PTO issued, in

United States District Court
For the Northern District of California

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light of PartsRiver’s amendments, a notice of intent to issue a
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reexamination certificate.

On November 2, 2010, the PTO issued a

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re-examination certificate, stating that claims 1 and 2 were
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patentable, as amended.
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PartsRiver then asked the Federal Circuit to dismiss its
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appeal as moot because claims 1 and 2, as litigated in this Court,
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no longer exist.

PartsRiver also moved the Federal Circuit to

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vacate this Court’s judgment.

Defendants did not oppose

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PartsRiver’s motion to dismiss, but opposed its motion to vacate.
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The Federal Circuit granted PartsRiver’s motion to dismiss its
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appeal and remanded to this Court the matter of whether judgment
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should be vacated.
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DISCUSSION
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“When a civil case becomes moot pending appellate
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adjudication, ‘[t]he established practice . . . in the federal
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system . . . is to reverse or vacate the judgment below and remand
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with a direction to dismiss.’”

Arizonans for Official English v.

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Arizona, 520 U.S. 43, 71 (1997) (quoting United States v.

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Munsingwear, Inc., 340 U.S. 36, 39 (1950)).

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vacatur is appropriate, a court considers primarily “whether the

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party seeking relief from the judgment . . . caused the mootness by

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voluntary action.”

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513 U.S. 18, 24 (1994).

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controversy is rendered moot through “‘happenstance,’” that is,

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“‘due to circumstances unattributable to any of the parties.’”

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Id. at 23 (quoting Karcher v. May, 484 U.S. 72, 82, 83 (1987)).

To determine whether

U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship,
For instance, vacatur is required when a

United States District Court
For the Northern District of California

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Vacatur must also “be granted where mootness results from the

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unilateral action of the party who prevailed in the lower court.”

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U.S. Bancorp, 513 U.S. at 23.

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The parties’ primary dispute in this motion is whether

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mootness -- that is, the elimination of claims 1 and 2, as

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presented in this litigation -- was caused by PartsRiver’s

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voluntary action.

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for an ex parte reexamination of the ’821 patent led to the

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amendment of claims 1 and 2.

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actions in the reexamination proceeding were voluntary and, as a

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result, vacatur is inappropriate.

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PartsRiver maintains that Defendants’ request

Defendants assert that PartsRiver’s

It is true that Defendants precipitated the reexamination

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proceedings.

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PartsRiver’s appeal, which had not yet been taken.

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time Defendants petitioned for reexamination, this case was not

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even before this Court.

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However, Defendants’ act could not render moot
Indeed, at the

By voluntarily amending claims 1 and 2 during reexamination,
PartsRiver gave up its right to appeal this Court’s judgment.
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The

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exercise of PartsRiver’s volition can be seen in the positions it

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took before the PTO, the BPAI and the Federal Circuit.

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beginning of the reexamination, PartsRiver “believed that the ’821

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Patent was valid as issued.”

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examiner rejected PartsRiver’s position, PartsRiver appealed to the

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BPAI.

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and agreed to amend the claims, albeit for the “purpose of

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terminating the present reexamination to avoid lengthy appeal

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proceedings” in the BPAI.

PartsRiver’s Reply 4:4.

At the

When the

During the pendency of the appeal, PartsRiver changed course

Defs.’ Opp’n Ex. 31, at 7.

PartsRiver’s

United States District Court
For the Northern District of California

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appeal to the BPAI was then dismissed.

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request did not compel PartsRiver to make the strategic decision in

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May 2010 to amend claims 1 and 2 “to avoid lengthy appeal

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proceedings.”

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PartsRiver could have attempted to pursue its appeal before the

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Federal Circuit and insisted that its appeal was not moot.

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could have asserted, as it did to the examiner, that the amended

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claims were “legally identical” to claims as published in the

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original ’821 patent.

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Defendants’ reexamination

After the reexamination proceedings concluded,

Id.

It

PartsRiver chose not to.

Even though it took action voluntarily, PartsRiver insists

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that the equities weigh in favor of vacatur, arguing that its

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amendments were intended to respond to the examiner’s rejections,

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not the Court’s summary judgment order.

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that, if it made such amendments, it could then attempt to vacate

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the Court’s summary judgment order, as it has.

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has disavowed any interest in the ’821 patent, pointing to its

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assignment of the patent to Kelora Systems, LLC.

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stake in the ’821 patent weighs against a conclusion that

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However, PartsRiver knew

Further, PartsRiver

Its lack of a

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PartsRiver will suffer an inequitable result.
PartsRiver, by its own acts, circumvented appellate review of

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the Court’s judgment.

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Gunn, 64 F.3d 1365, 1372 (9th Cir. 1995).

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Thus, vacatur is not appropriate.

Dilley v.

CONCLUSION
For the foregoing reasons, the Court DENIES PartsRiver’s
motion to vacate the judgment.

(Docket No. 260.)

IT IS SO ORDERED.

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United States District Court
For the Northern District of California

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Dated: April 21, 2011
CLAUDIA WILKEN
United States District Judge

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