Nissim Corp. v. Clearplay, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
__________________________

NISSIM CORP.,
Plaintiff-Appellant,
v.
CLEARPLAY, INC.,
MATTHEW JARMAN, AND LEE JARMAN,
Defendants-Appellees.
__________________________

2012-1188
__________________________

Appeal from the United States District Court for the
Southern District of Florida in No. 04-CV-21140, Judge
Paul C. Huck.
___________________________

Decided: December 11, 2012
___________________________

JOHN C CAREY, Carey, Rodriguez, Greenberg &
O’Keefe, LLP, of Miami, Florida, argued for plaintiff-
appellant.

REID A. PAGE, Long & Page, LLP, of Denver, Colorado,
argued for defendants-appellees. With him on the brief
were G. STEPHEN LONG, PAGE G. CROWTHER, and WILLIAM
AARON VANDIVER.
NISSIM CORP v. CLEARPLAY 2

__________________________

Before NEWMAN, MOORE and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge REYNA.
Dissenting opinion filed by Circuit Judge MOORE.
REYNA, Circuit Judge.
Nissim Corp. (“Nissim”) seeks to enforce an agree-
ment it entered into to settle its patent infringement
lawsuit against Clearplay Inc., Matthew Jarman, and Lee
Jarman (collectively, “ClearPlay”). This is at least the
third time the instant case has come before this court.1
Because the district court’s dismissal of this case as moot
was error, we reverse and remand for further proceedings.
BACKGROUND
I.
Nissim holds patents enabling viewers of DVDs to
skip or mute objectionable content (sometimes abbrevi-
ated “OC”), and has developed the CustomPlay Specifica-
tions (“Specifications”) to standardize the creation of
“filters” for that purpose. These filters allow viewers with
compatible players to skip or mute content that they find
objectionable. To create a filter for a DVD, a provider
must associate scenes in the movie with codes from the
Specifications. For example, a filter could indicate that

1 See In re Nissim Corp., 428 F. App’x 981 (Fed.
Cir. 2011) (denying Nissim’s request for mandamus);
Nissim Corp. v. Clearplay, Inc. (“Nissim I”), 374 F. App’x
987 (Fed. Cir. 2010) (interpreting the settlement agree-
ment). We have also previously declined to hear Clear-
Play’s appeal of its related case against Nissim for
tortious interference with a contractual relationship.
ClearPlay, Inc. v. Abecassis, 602 F.3d 1364 (Fed. Cir.
2010).
3 NISSIM CORP v. CLEARPLAY

time range 0:32:00 – 0:32:15 of the DVD corresponds to
the Specifications’ code for explicit violence. This process
is called “coding.”
ClearPlay developed a DVD player capable of filtering
objectionable content, as well as filters for that player,
and Nissim sued ClearPlay for infringement. The parties
entered into an agreement pursuant to which ClearPlay
would obtain a license in exchange for agreeing to imple-
ment its filters in compliance with the Specifications, and
the case was dismissed. At the time of settlement, Clear-
Play had produced over 2000 filters.2
Nissim eventually came to believe that ClearPlay had
not brought the filters into compliance. It filed a motion
to enforce the agreement, and the district court appointed
a special master to determine whether ClearPlay’s filters
complied with the Specifications. Rather than examine
thousands of filters, the parties agreed to a procedure by
which the special master would examine a representative
sample of eight filters. Four of the eight sample filters
were selected by Nissim. The remaining four were chosen
by the special master from a list of ten filters chosen by
ClearPlay. After viewing the movies and hearing testi-
mony, the special master recommended denial of the
motion to enforce, finding that the filters in the sample
substantially complied with the requirements of the
agreement. The district court adopted the recommenda-
tion.
Nissim appealed, and we vacated the district court’s
judgment. This court was concerned that interpreting the
“artistic judgment” portion of the agreement expansively,

2 It is not clear from the record, nor does it mat-
ter to this appeal, exactly how many filters are at issue.
The parties have used the number 2000 as an approxima-
tion, and we shall do the same.
NISSIM CORP v. CLEARPLAY 4

as the district court did, would swallow the substantial
compliance rule. It vacated the order and remanded “for
the fact finder to determine whether ClearPlay’s OC maps
substantially comply with the Specifications.” Nissim I,
374 F. App’x at 994.
II.
On remand, Nissim again filed for summary enforce-
ment of the agreement, requesting that the court “enjoin
ClearPlay from selling or distributing the filters it created
under the wrong standard.” Nissim contended that
ClearPlay’s systemic failure to use the Specification in
crafting its filters meant that ClearPlay was not in sub-
stantial compliance under the terms of the agreement.
The court denied the motion, observing that this court’s
remand opinion required determinations of filter compli-
ance to be performed on a case-by-case basis. The court
again referred the matter to the special master, noting
that it would “be more efficient and fair to use the same
procedure as before, with the results from a representa-
tive sample set of filters being presumed to apply to all
the filters from which the sample was obtained.” J.A. 4.
ClearPlay moved to resume proceedings before the
special master, and Nissim argued that a representative
sample procedure was no longer appropriate. According
to Nissim, this court’s opinion in Nissim I precluded the
court from using such a procedure. Nissim therefore
suggested that the special master’s recommendation
should be “limited to the individual filters themselves and
not presumptively applied as a whole to the universe of
filters from which the sample set was obtained.” J.A.
5899. Ultimately, the court ordered the proceedings to be
resumed before the special master, directing him to
examine the same eight filters he had previously exam-
ined and to produce a report on “whether each of the
5 NISSIM CORP v. CLEARPLAY

[f]ilters, separately and individually, substantially com-
plies with the CustomPlay Objectionable Content Specifi-
cations.” J.A. 5930. While the revised order governing
the special master proceedings no longer refers to a
“representative sample,” it also contains nothing to con-
tradict its post-remand statement that it would again
employ a representative sample methodology.
ClearPlay then moved to dismiss the action as moot,
representing that it had discontinued sales of the eight
filters in the sample set and arguing that there was
nothing further for the court to decide in this case. Nis-
sim replied, making the same arguments it makes to this
court. Notably, Nissim argued that the revised special
master procedure “did not purport to alter the sample-set
approach that had been previously ordered.” J.A. 5999.
The court heard argument on the mootness motion. It
began by stating its belief that the case was moot because
“if the case is dismissed [ClearPlay] will either comply
with Nissim’s request that it reconfigure the filters in
question, or just discard them, and not sell them.” J.A.
9286. The “filters in question” appears to refer to the
eight filters examined by the special master that Clear-
Play voluntarily stopped selling and distributing. The
court explained its understanding that our remand opin-
ion in Nissim I precluded it from deciding the case using a
representative sampling, and that the correct way to
proceed was via the mediation procedures in section 4.6 of
the settlement agreement. The court then stated that it
had “already indicated that . . . other than the [filters]
that were the subject of the submission to the special
master [it] was not going to deal with any other filtering
issues.” J.A. 9288. It concluded that, since ClearPlay had
offered to implement Nissim’s changes to those eight
filters or withdraw them from distribution, there was not
“anything else for this Court to do.” J.A. 9288. The court
NISSIM CORP v. CLEARPLAY 6

emphasized its desire to be done with the case, stating:
“Any future filter disputes, do what you want, I am not
going to handle them. I would assume you would handle
it pursuant to section 4.6 of the settlement agreement,
which is how it should have been done in the first place.”3
J.A. 9295-96. On the same day, the court entered its
order dismissing the case as moot “for the reasons dis-
cussed in open court.” J.A. 6219.
Nissim appeals. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).
DISCUSSION
Nissim raises two arguments: first, that the district
court erred in denying its “Motion for Summary Enforce-
ment” of the Agreement, and second, that the district
court erred in dismissing the case as moot. Because
ClearPlay contends that mootness deprives this court of
jurisdiction over the appeal, we address that issue first.
I.
Nissim argues that it was error for the district court
to dismiss the case as moot. The thrust of Nissim’s argu-
ment is that although ClearPlay withdrew eight of the
filters, there was still a case or controversy regarding the
remaining 1992 filters. Nissim also points out that
ClearPlay’s withdrawal of eight filters falls far short of
the relief that Nissim seeks. ClearPlay responds that the
parties had agreed to limit this case to just the eight
filters and that the district court correctly concluded that
ClearPlay’s decision to discontinue those filters rendered
the case moot.

3 ClearPlay did make an oral motion to enforce
the agreement through section 4.6, which the district
court denied. See J.A. 9087-88.
7 NISSIM CORP v. CLEARPLAY

The concept of “mootness” derives from the case or
controversy requirement of Article III of the Constitution.
See Allen v. Wright, 468 U.S. 737, 750 (1984). “Mootness
is a jurisdictional question because the Court is not
empowered to decide moot questions or abstract proposi-
tions[.]’” North Carolina v. Rice, 404 U.S. 244, 246 (1971)
(internal quotation marks omitted). To avoid mootness,
“[t]he controversy must be definite and concrete, touching
the legal relations of parties having adverse legal inter-
ests.” Aetna Life Ins. Co. of Hartford, Conn. v. Haworth,
300 U.S. 227, 240-41 (1937). The case must be real and
substantial, “admitting of specific relief through a decree
of a conclusive character, as distinguished from an opin-
ion advising what the law would be upon a hypothetical
state of facts.” Id. at 241. “[T]o avoid dismissal for moot-
ness, an actual controversy must remain at all stages, not
merely at the time the complaint is filed.” Gerdau Amer-
isteel Corp. v. United States, 519 F.3d 1336, 1340 (Fed.
Cir. 2008) (citing Steffel v. Thompson, 415 U.S. 452, 460
n.10 (1974)). “Whether an actual controversy exists to
support subject matter jurisdiction is a question of law
subject to de novo review.” Highway Equip. Co., Inc. v.
FECO, Ltd., 469 F.3d 1027, 1031-32 (Fed. Cir. 2006).
The district court dismissed this case as moot “for the
reasons discussed in open court.” J.A. 6219. But a review
of the transcript of the hearing reveals little more than
that the court was exasperated with the parties. Having
experienced the parties and attorneys in this case, we are
not unsympathetic.4 Nevertheless, whether the case is

4 The excessive hyperbole in the briefs makes
them difficult to take seriously and unpleasant to read,
and strips both parties of their credibility. Nissim charac-
terizes ClearPlay’s arguments as “moan[ing],” “excuse[s],”
and “absurd”; it describes one of ClearPlay’s communica-
tions with the special master as “bias-inducing screed.”
NISSIM CORP v. CLEARPLAY 8

moot does not depend on a court’s opinion of the litigants
or of counsel.
In light of our review of the transcript of the hearing,
we understand the legal basis of the court’s decision to be
its belief that ClearPlay’s concessions regarding the eight
filters left it with no remaining issues to resolve. This
belief was incorrect for at least two reasons. First,
Nissim sought more than just an order requiring Clear-
Play to use the specification in making its filters. In its
original motion, Nissim sought to enjoin the sale of
ClearPlay’s players and to enjoin the sale and distribution
of ClearPlay’s filters. On remand, Nissim again asked the
court to enjoin ClearPlay from selling or distributing the

ClearPlay’s briefs are no better; disparaging Nissim’s suit
as “unnecessarily time-consuming and expensive,” “ill-
conceived,” “wast[ing] the time and resources of ClearPlay
and the [c]ourt,” and a “massive waste of judicial time and
resources,” and referring to Nissim’s arguments “inexpli-
cable,” “strange,” and “baffling.” The record reveals the
parties’ behavior in the district court proceedings to be
even worse. The parties would be well-advised to take the
advice of Justice Scalia and Bryan Garner: “Cultivate a
tone of civility, showing that you are not blinded by
passion. . . . A straightforward recital of the facts will
arouse whatever animosity the appellate court is capable
of entertaining, without detracting from the appearance of
calm and equanimity that you want to project.” Antonin
Scalia & Bryan A. Garner, Making Your Case: The Art of
Persuading Judges 34-35 (2008).
The parties’ poor judgment extends beyond their
choice of words. For example, Nissim stated that “the
district court stuck Nissim with ClearPlay’s trivial ges-
ture” and that the court’s decision “mock[ed] justice.”
These statements were at best unprofessional. See ABA
Model Rules of Professional Conduct Rules 3.5, 8.4(d).
ClearPlay’s statements throughout its brief that Nissim
had requested only prospective relief were obvious mis-
representations that cannot easily be explained away as
mistakes. See id. Rule 3.3(a).
9 NISSIM CORP v. CLEARPLAY

filters. It referred to this relief in its response to the
motion to dismiss. Although Nissim did not identify this
relief in its briefing, it did reiterate this request at oral
argument. Oral Arg. at 17:30, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
12-1188.mp3.
Second, Nissim sought relief on all of the filters, not
just the eight in the sample. The representative sampling
that was originally performed examined eight filters in
order to determine compliance for all of the pre-
settlement filters. After Nissim I, the district court
remained committed to using sampling rather than
examining all 2000 filters. Although it did not contain
language about a “representative sample,” the updated
special master order pertained only to the eight movies
originally sampled. The court’s decision to submit only
those eight filters to the special master did not divest it of
its jurisdiction over the remaining filters. Nor is it incon-
sistent with the court’s prior statement that it would
continue to employ a representative sampling technique.
In our view, the updated order reflects the fact that the
sample had already been chosen and that the district
court was taking care to conduct the special master inves-
tigation in a manner consistent with our opinion.
To the extent that the court may have interpreted our
opinion in Nissim I to preclude it from an employing a
representative sampling to determine compliance for the
entire set of filters, that was also error. Although Nissim
I emphasized the need for the fact finder to address each
movie on a case-by-case basis, it does not follow that the
fact finder was required to examine each of the 2000
movies individually. Nissim I held only that the “artistic
judgment” language of section 1.4 did not create a blanket
exception to compliance with the Specifications. 374 F.
App’x at 993 (holding that section 1.4 does not “allow
NISSIM CORP v. CLEARPLAY 10

ClearPlay to use its artistic judgment to refuse to code
objectionable material because it believes the relevance to
outweigh the objectionableness.”). Rather, the decisions
to code or not to code particular content must be based on
the fact-specific nature of the content at issue. This does
not mean that the court and the parties may not agree to
use a representative sampling methodology to settle the
dispute without having to evaluate all 2000 movies—they
may, so long as the evaluation of the representative filters
includes the fact-specific inquiries required by the agree-
ment and the Specifications. We would also expect that
any sampling methodology used is one that is agreed upon
by the parties and the court concerning the selection and
number of filters that will be reviewed. That appears to
be what happened in this case. Indeed, the court and the
parties agreed that the results of the review of the eight
sample filters would be made applicable to the entire
universe of filters, i.e., the 2000, and the court reiterated
that procedure on remand from Nissim I.
Our review of the record also reveals no adequate ba-
sis to conclude that the court had withdrawn jurisdiction
over the remaining 1992 filters. The court’s original order
withdrawing jurisdiction was vacated by this court.
Nissim I, 374 F. App’x at 994. After remand, the court’s
order denying Nissim’s motion to enforce did not with-
draw jurisdiction, and in fact continued to apply a repre-
sentative sampling procedure. The court also denied
Nissim’s motion to reconsider, citing “the reasons stated
in open court at the November 23rd hearing.” J.A. 5812.
The transcript of that hearing consumes over fifty pages
and contains two references to jurisdiction, each of which
states that the court had indicated in a prior order that it
had terminated its jurisdiction to resolve any further
filter disputes. But the only prior order to that effect in
the record is the order that was vacated by this court.
11 NISSIM CORP v. CLEARPLAY

And this court had already said that the court’s attempt
to relinquish jurisdiction over future disputes would not
be ripe until “the parties filed a second dispute over the
Agreement with the district court and the district court
refused to assert jurisdiction.” Nissim I, 374 F. App’x at
994. Given the extensive discussion in that hearing, we
do not believe the parties would be on notice that the
motion to reconsider had been denied based on those two
passing references to a vacated order.
Subsequently, ClearPlay took the position that Nis-
sim’s disputes as to the remaining 1992 were “future”
disputes. On that basis, it discontinued the eight sample
filters and filed a motion to dismiss the case as moot. The
court held a hearing on ClearPlay’s motion in which
jurisdiction was alluded to twice. First, apparently reject-
ing Nissim’s argument that ClearPlay had waived arbi-
tration, the district court stated that filter disputes
should be settled pursuant to section 4.6, and that “other
than the [filters] that were the subject of the submission
to the special master[, it] was not going to deal with any
other filtering issues.” J.A. 9288. Second, based on its
incorrect understanding that Nissim I precluded the use
of a representative sample, and in contravention to Nis-
sim I’s mandate requiring “the fact finder to determine
whether ClearPlay’s OC maps substantially comply with
the Specifications,” 374 F. App’x at 994, the court stated
that it was “no longer going to retain jurisdiction to
enforce the settlement agreement.” J.A. 9290.
The district court might well have had discretion to
dismiss the case entirely, but that is not what it did.
Instead, the court reframed the dispute from a represen-
tative sample to a dispute over eight individual filters and
characterized the dispute as to the remaining 1992 filters
as a future dispute. We recognize that the need to inter-
pret the orders in light of the extensive “proceedings in
NISSIM CORP v. CLEARPLAY 12

open court” leaves room for debate as to the actual basis
for the court’s decisions;5 however, on the record before
us, we decline to read the transcript as an exercise of the
district court’s discretion to withdraw jurisdiction over the
existing controversy over the 2000 filters. Nissim’s re-
quests for relief with regard to the remaining 1992 filters
was not a “future dispute.” It was before the court and
could easily have been resolved by the representative
sample had ClearPlay not frustrated that effort by with-
drawing the sample filters, throwing out years of work.
But the controversy still remained, and the decision to
dismiss this case on the basis of mootness was error.
II.
Having concluded that the case is not moot, we turn
to Nissim’s argument that the district court erred in
denying its motion for summary enforcement. Nissim
argues, as it did below in its motion for summary en-
forcement, that the undisputed evidence shows that
ClearPlay did not base its coding decisions on the Specifi-
cations. The district court denied Nissim’s motion, ob-
serving that “the test for whether ClearPlay’s filters are
compliant is whether ClearPlay gets the right result, not
how it gets there.” J.A. 5388. Citing this court’s instruc-
tion that compliance must be determined on a case-by-
base basis, the district court determined that it could not
enjoin ClearPlay’s sales and distributions of all filters
based on testimony about the process by which the filters
had been produced.
In light of our holding that this case is not moot, we
conclude that we lack jurisdiction to address this issue.

5 Should the district court again choose to dis-
miss this case on remand, regardless of the basis, we
encourage the court to set forth its reasoning in a written
order.
13 NISSIM CORP v. CLEARPLAY

Our jurisdiction is limited by statute to appeals from final
decisions. See 28 U.S.C. § 1295(a)(1) (providing this court
with jurisdiction “from a final decision of a district court”
in cases arising under the patent laws). To be appealable,
a decision must be “a final dispositive ruling that ends
litigation on the merits.” Copelands’ Enters., Inc. v. CNV,
Inc., 887 F.2d 1065, 1067 (Fed. Cir. 1989) (en banc) (quot-
ing R.G. Barry Corp. v. Mushroom Makers, Inc., 609 F.2d
1002, 1005 (CCPA 1979)). The order denying Nissim’s
motion for summary enforcement did not end the litiga-
tion on the merits and therefore was not final. See, e.g.,
Lermer Germany GmbH v. Lermer Corp., 94 F.3d 1575,
1576-77 (Fed. Cir. 1996) (holding that the denial of sum-
mary judgment is not a final decision subject to appeal);
Aleut Tribe v. United States, 702 F.2d 1015, 1019 (Fed.
Cir. 1983) (holding that the denial of a motion to dismiss
is not a final decision subject to appeal). The court has
yet to resolve Nissim’s complaint regarding the remaining
1992 filters, as well as the remaining remedies Nissim
requests. Only when it has done so will we have a deci-
sion to review.
III.
In the interests of clarity, it is important to identify
several issues which are not properly before us on appeal
and which we therefore do not decide, but which may be
relevant on remand.
We do not decide whether section 4.6 of the agreement
requires the parties to arbitrate their filter disputes.
Although the court seems to have discussed arbitration on
numerous occasions, the parties never requested a deci-
sion on this issue and none was granted. Similarly, we do
not address Nissim’s argument that arbitration was
waived, as the district court has not decided this issue one
way or the other. Nor did the court’s order refer the
NISSIM CORP v. CLEARPLAY 14

remaining filters to arbitration under section 4.6 of the
agreement, as ClearPlay contends. Nothing prevents
either party from moving to compel arbitration on re-
mand; however, the issue is not before us at this time.
We also express no opinion as to the merits of the re-
maining 1992 filters. All that can be said at this point is
that the eight filters withdrawn by ClearPlay are no
longer in the case. The district court has made no deci-
sion as to whether any of the remaining filters comply
with the Specifications. Nor has it determined by what
means this dispute as to those filters will be resolved. As
discussed above, our opinion in Nissim I does not preclude
the court from using a representative sample. The dis-
trict court might, for example, determine that ClearPlay’s
withdrawal of the eight samples operated as a concession
that all of the filters were noncompliant. On the other
hand, it might select another representative sample of
filters. We decline to speculate as to what route the court
will choose; these issues all remain to be addressed, if at
all, on remand.
Finally, because we read the court’s order as relin-
quishing jurisdiction only over future disputes—not over
the current dispute in the instant case—we do not decide
under what circumstances it would be an abuse of discre-
tion for the district court to limit or relinquish the juris-
diction it retained over the settlement agreement in its
original order dismissing the patent case, and which it
has exercised for the past six years. See Kokkonen v.
Guardian Life Ins. Co. of Am., 375 U.S. 375, 380-81 (1994)
(holding that a federal district court has the discretion to
retain ancillary jurisdiction to enforce a settlement
agreement).
15 NISSIM CORP v. CLEARPLAY

IV.
We reverse the district court’s dismissal of this case
for mootness, and remand for further proceedings in
accordance with this opinion.
REVERSED
COSTS
Each party shall bear its own costs.
 NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
__________________________

NISSIM CORP.,
Plaintiff-Appellant,
v.
CLEARPLAY, INC.,
MATTHEW JARMAN, AND LEE JARMAN,
Defendants-Appellees.
__________________________

2012-1188
__________________________

Appeal from the United States District Court for the
Southern District of Florida in No. 04-CV-21140, Judge
Paul C. Huck.
__________________________

MOORE, Circuit Judge, dissenting.
The majority recognizes the well-settled principle that
a district court has broad discretion to relinquish jurisdic-
tion over enforcing the parties’ settlement agreement, but
decides that the record in this case “reveals no adequate
basis to conclude that the court had withdrawn jurisdic-
tion over the remaining 1992 filters.” Maj. Op. at 10. On
the contrary, the record unambiguously shows that the
court gave up its jurisdiction over the 1,992 filters that
were not referred to the special master and then dis-
missed the case as moot with respect to the eight repre-
NISSIM CORP v. CLEARPLAY 2

sentative filters that ClearPlay removed from the market.
Because I believe the district court did not abuse its
discretion by relinquishing jurisdiction, I respectfully
dissent.
The majority is correct that a court’s decision to retain
jurisdiction to enforce a settlement agreement is entirely
discretionary. See Kokkonen v. Guardian Life Ins. Co. of
Am., 511 U.S. 375, 378 (1994). Indeed, absent some
affirmative act by the court to retain jurisdiction, “en-
forcement of a settlement agreement falls outside the
scope of the ancillary jurisdiction of the federal courts,
even when the court had jurisdiction to hear the underly-
ing case.” Anago Franchising, Inc. v. Shaz, LLC, 677 F.3d
1272, 1278 (11th Cir. 2012) (citing Kokkonen, 511 U.S. at
379–80)). Generally, courts exercise such jurisdiction in
the interests of judicial economy to “permit disposition by
a single court of claims that are . . . factually interdepend-
ent” and “to enable a court to function successfully . . . to
manage its proceedings, vindicate its authority, and
effectuate its decrees.” Kokkonen, 511 U.S. at 380. It is
thus crucial that a district court have discretion through-
out the litigation, not just at the beginning, to assess
whether its assertion of jurisdiction continues to foster
judicial economy and is necessary to enforce its own
orders. The court must therefore be allowed to exercise
its discretion to relinquish jurisdiction.
The majority agrees with this legal axiom, but con-
cludes as a factual matter that the court did not clearly
withdraw jurisdiction over the 1,992 filters remaining in
the case. I disagree. In its order dismissing the case, the
district court stated that it was “withdraw[ing] its prior
retention of jurisdiction to enforce the settlement and
license agreement entered into between the parties on
November 23, 2005.” J.A. 6 (emphasis added). With all
due respect, there is nothing unclear about this state-
3 NISSIM CORP v. CLEARPLAY

ment. The district court plainly relinquished jurisdiction
over any additional filtering disputes, i.e., the 1,992 filters
remaining in the case after ClearPlay agreed to stop
selling the eight representative filters.
Although the district court unambiguously withdrew
its jurisdiction to enforce the settlement agreement, the
majority seems to believe that the order to dismiss some-
how left the court’s reasoning in doubt. The majority
states that “[s]hould the district court again choose to
dismiss this case on remand, regardless of the basis, we
encourage the court to set forth its reasoning in a written
order.” Maj. Op. at 12 n.5 (emphases added). Even if the
court’s reasoning were at all opaque, the district court
clarified its thinking in its statements in open court on
December 21, 2011, which the written order expressly
incorporates.
At that hearing, the court explained that it “reconsid-
ered” its decision to retain jurisdiction and decided that
“the parties should go back to the requirements or proce-
dures set forth in 4.6 of the settlement agreement.”
J.A. 9287-88. The court stated that “other than the [fil-
ters] that were the subject of the submission to the special
master – [the court] was not going to deal with any other
filtering issues.” Id. at 9288 (emphasis added). As a
result, the court concluded that, because ClearPlay “indi-
cated it is going to either agree to take the [filters] that
have been selected as the samples off the shelves, or to
put them into compliance, I don’t think there’s anything
else for this Court to do.” Id. at 9288. The court further
explained that it was “no longer going to retain jurisdic-
tion to enforce the settlement agreement.” J.A. 9290 (em-
phasis added).
If the court’s express withdrawal of jurisdiction in its
order of dismissal were not enough, surely these addi-
NISSIM CORP v. CLEARPLAY 4

tional statements adequately demonstrate that the court
relinquished jurisdiction over the settlement agreement.
Moreover, they show that the court dismissed the case as
moot only with regard to the eight filters that ClearPlay
took off the market because the court had already exer-
cised its discretion not to retain jurisdiction over the other
1,992 filters. Having decided to relinquish jurisdiction
over those filters, the court correctly reasoned that Clear-
Play’s decision to “take off the shelves and not sell the
[eight] allegedly offending filters” was “the end of this
litigation.” J.A. 9293-94.
The district court was never, and is not now, obligated
to retain jurisdiction to enforce the settlement agreement.
This is particularly true here because the court deter-
mined that continuing to assert jurisdiction would not
foster judicial economy. See Kokkonen, 511 U.S. at 380.
Far from furthering judicial economy, the majority va-
cates the district court’s ruling but authorizes it to do on
remand precisely what it already did: exercise its discre-
tion to “withdraw[] its prior retention of jurisdiction to
enforce the settlement and license agreement.” J.A. 6. I
see no reason to require the district court to engage in
this pointless exercise. Because the district court did not
err by withdrawing jurisdiction over the 1,992 filters and
dismissing the case as moot with regard to the eight
filters that ClearPlay agreed not to sell, I would affirm.
Nevertheless, since my colleagues do not agree that the
district court clearly withdrew its jurisdiction over the
1,992 filters, the court on remand merely needs to restate
its decision to relinquish jurisdiction in the clearest possi-
ble terms and this case should be at an end. Of course,
nothing prevents the plaintiff from bringing a new action
on the 1,992 filters or pursuing enforcement under section
4.6 of the settlement agreement.