Sorensen Ex Rel. Sorensen Research & Development Trust v. Lexar Media, Inc.

NOTE: ThiS order is nonprecedential n United States Court of AppeaIs for the FederaI Circuit JENS ERIK SORENSEN, AS TRUSTEE OF SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff-Appellant, V. LEXAR MEDIA, INC., Defendant-Appellee, and _ PHILLIPS PLASTICS CORPORATION, Defendant-Appellee. 2011-1125 -- '1""~ Appea1 from the United States District C0urt§?6¥F"the N0rthern District of Ca1if0rnia in case n0. 08-CV-0O95, Judge J ames Ware. ON MOTION Befo:re PROST, MAYER, and M00RE, Circuit Judges. MOORE, Circuit Judge. 0 R D E R SORENSEN V. LEXAR l\TEDlA 2 Lexar Media, lnc. (Lexar) moves to dismiss Jen Erik Sorensen's appeal for lack of jurisdiction Sorensen moves for an extension of time to file an opposition and opposes the motion to dis1niss. Sorensen sued Lexar in the United States District Court for the Northern District of California alleging patent infringement. The patent expired in February of 2008, shortly after Sorenson Hled the suit. ln February 2009, the district court stayed proceedings in this case pending the Patent and Trademark Office’s reexamina- tion of the patent. On January 8, 2010, in a final office action, the PTO determined that all of Sorensen’s patent claims asserted against Lexar were not patentable_. In April 2010, Sorensen appealed the PTO’s final rejection to the Board of Patent Appeals and Interferences. Thereaf- ter, the district court denied Sorensen’s motion to lift the stay of proceedings in the case. The district court noted that the denial of Sorenson's motion was without preju- dice to Sorenson renewing the motion on or after May 2, 2011. Sorensen filed a notice of appeal of the order deny- ing his motion to lift the stay, asserting that the district court violated his rights to due process and equal protec- tion. Lexar moves to dismiss the appeal, asserting that the stay order is not an immediately appealable order. As a general rule, an order staying a case`pend.i.gg re- examination is not subject to immediate appeal, Slip Track Sys., Inc. u. Metal Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998); Gould v. Control Laser C'orp., 705 F.2d 1340, 1341 (Fed. Cir. 1983). One narrow exception allows an immediate appeal if the stay order effectively puts the appellant out of court because no court would review an issue following the stay. Slip Track, 159 F.3d at 1340. For example, in Slip Track we allowed an immediate appeal when after the PTO reexamination proceedings concluded it was possible that the appellants would be 3 SORENSEN V. LEXAR MEDlA unable to raise the issue of priority of invention in the any forum. Id. ln this case, the appellant has not shown that any is- sue will evade review by a federal court, due to the stay of proceedings pending reexamination As we noted in Gould, "[d]istrict court and PTO decisions on the merits are both reviewable by this court." Gould, 705 F.2d at 1342. Sorenson argues that the issue whether the stay was proper would become moot if this court dismisses the appeal for lack of jurisdiction. Of course, this may be true of a large variety of nonfinal orders that parties would try to appeal, but that does not create jurisdiction to review the nonfinal orders. Accordingly, IT ls ORDERED THAT: (1) The motion to dismiss is granted. The appeal is dismissed (2) The motion for an extension of time to file an op- position to the motion to dismiss is granted (3) Each side shall bear its own costs. FoR THE CoURT _ 77 M_`§&q:` /s/ Jan Horbaly Date J an Horbaly Clerk cc: lVIe1ody A. Kramer, Esq. Jared Bobrow, Esq. Kimberly K. Dodd, Esq. s20 IssUEo As A MANDATE; HAR 0 4 2911 Fl D u.s. cover oFFEAPPlaALs rea 11-us FEoEsA:.. n1Rr:urr HAR 04 2011 .|AN |iDRBALY GLEH£