In Re AD-II Engineering Inc.

NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
MISCELLANEOUS DOCKET NO. 858
IN RE AD-II ENGINEERING, INC.,
Petitioner.
ON PETITION FOR WRIT OF MANDAMUS
Before RADER, BRYSON, and LINN, Circuit Judges.
LINN, Circuit Judge.
ORDER
AD-II Engineering, Inc. petitions for a writ of mandamus to direct the United
States District Court for the Northern District of Illinois to (1) vacate or reverse its August
2 and August 3, 2007 orders denying AD-II’s motion for summary judgment and (2)
vacate its August 2 and August 3, 2007 orders rejecting AD-II’s objection to SRAM
Corporation’s assertion of infringement of claim 27 of SRAM’s patent.
SRAM sued AD-II for infringement, and AD-II sought a declaratory judgment that
the patent was invalid, unenforceable, and not infringed. The district court determined,
inter alia, that the patent was not invalid, and AD-II appealed. This court vacated and
remanded for further proceedings concerning invalidity. SRAM Corp. v. AD-II
Engineering, Inc., 465 F.3d 1351 (Fed. Cir. 2006) (SRAM II). On remand, SRAM filed a
notice of amendment indicating that it wished to assert infringement of claim 27 of the
patent in addition to previously asserted claim 16. While that request was pending
before the district court, AD-II petitioned this court for a writ of mandamus directing the
district court to enter judgment that claim 16 is invalid and to vacate its order requiring
briefing concerning whether SRAM could assert infringement of claim 27. AD-II argued
that this court’s mandate in SRAM II did not permit the district court to allow SRAM to
assert new claims in the proceedings on remand. We denied that mandamus petition
because, inter alia, the district court had not decided whether to allow SRAM to assert
infringement of claim 27. In re AD-II Eng., Inc., Misc. No. 852 (Fed. Cir. May 29, 2007).
On August 2, the district court held a hearing on the issue and issued an order
“reject[ing] AD-II’s objection to SRAM’s ability to raise claim 27 at this stage in the
proceeding.” At the August 2 hearing, the district court stated “I didn’t find anything
in . . . prior orders of the Court or in the mandate, certainly the mandate of the Federal
Circuit, that would preclude bringing Claim 27 into the case at this point . . . if it is a
matter of discretion at this point to entertain it, I am going to exercise that discretion and
entertain the claim based on Claim 27.”
The remedy of mandamus is available only in extraordinary situations to correct a
clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461,
464 (Fed. Cir. 1988). A party seeking a writ bears the burden of proving that it has no
other means of attaining the relief desired, Mallard v. U.S. Dist. Court for the Southern Dist.
of Iowa, 490 U.S. 296, 309 (1989), and that the right to issuance of the writ is "clear and
indisputable," Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980).
AD-II argues that the proceedings in this case prior to the district court’s August 2
decision concerned only claim 16 and not claim 27. AD-II argues that the district court’s
actions are inconsistent with the mandate issued by this court in SRAM II. AD-II asserts
that it seeks to enforce its “right to proceedings consistent with SRAM II [including] the
right not to be compelled to participate in proceedings inconsistent with that opinion.
Mandamus is available to enforce such a right because it cannot be vindicated by
appeal.”
Misc. 858 2
On remand, a district court may, in its discretion, allow new claims to be asserted if
the appellate court’s mandate does not expressly say otherwise. See Rogers v. Hill, 289
U.S. 582, 587-88 (1933) (where appellate court remanded for further proceedings, “the
mandate would not prevent the District Court in the exercise of a sound discretion from
allowing plaintiff, were adequate showing made, to file additional pleadings, vary or expand
the issues . . .”); see also Youghiogheny and Ohio Coal Co. v. Milliken, 200 F.3d 942, 950
(6th Cir. 1999) (“An appellate court’s mandate . . . forecloses a lower court or an agency
only from revisiting issues that the appellate court actually decided”); Biggins v. Hazen
Paper Co., 111 F.3d 205, 209 (1st Cir. 1997) (“mandates require respect for what the
higher court decided, not for what it did not decide”); Nguyen v. United States, 792 F.2d
1500, 1502-03 (9th Cir. 1986) (“Absent a mandate which explicitly directs to the contrary, a
district court upon remand can permit the plaintiff to ‘file additional pleadings, vary or
expand the issues’ . . . the decision whether to allow leave to amend is within the trial
court’s discretion”).
AD-II has not shown a clear abuse of discretion. Furthermore, mandamus is not
warranted merely to avoid the inconvenience of having to litigate a claim for relief. See
United States v. Watson, 603 F.2d 192, 196-97 (CCPA 1979) (that petitioner may suffer
hardship, inconvenience, or unusually complex trial does not provide basis for court
exercising its discretion to grant mandamus); see also Federal Trade Comm’n v.
Standard Oil Co., 449 U.S. 232, 244 (1980) (expenses and burdens of defending action
do not constitute irreparable harm). We determine that AD-II has not shown that
mandamus relief is proper.
Accordingly,
IT IS ORDERED THAT:
Misc. 858 3
The petition for a writ of mandamus is denied.
FOR THE COURT
Sept. 28, 2007 /s/ Richard Linn
Date Richard Linn
Circuit Judge
cc: Michael T. Brady, Esq.
Robert E. Browne, Esq.
Judge, U.S.D.C., N.D. Ill.
Clerk, U.S.D.C., N.D. Ill.
s17
Misc. 858 4