Case: 24-116 Document: 16 Page: 1 Filed: 03/18/2024
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re VLSI TECHNOLOGY LLC,
Petitioner
______________________
2024-116
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Northern District of California in No.
5:17-cv-05671-BLF, Judge Beth Labson Freeman.
______________________
ON PETITION
______________________
Before MOORE, Chief Judge, TARANTO and CHEN, Circuit
Judges.
MOORE, Chief Judge.
ORDER
VLSI Technology LLC petitions this court for a writ of
mandamus seeking to reverse an order allowing Intel Cor-
poration to amend its answer. Intel opposes. VLSI replies.
For the following reasons, we deny the petition.
VLSI has asserted a number of patents against Intel in
several forums. Two United States district court actions
are currently pending, one in the Western District of Texas,
which was previously on appeal before this court, VLSI
Tech. LLC v. Intel Corp., 87 F.4th 1332 (Fed. Cir. 2023),
Case: 24-116 Document: 16 Page: 2 Filed: 03/18/2024
2 IN RE VLSI TECHNOLOGY LLC
and the present case filed by VLSI against Intel in the
Northern District of California, alleging, as relevant here,
that Intel infringed U.S. Patent Nos. 8,566,836 (the ’836
patent); 8,004,922 (the ’922 patent); 7,675,806 (the ’806 pa-
tent); and 8,268,672 (the ’672 patent).
Intel’s amended answer here raised an affirmative de-
fense that, under a prior agreement with a third party, In-
tel was licensed to practice the patents. After discovery
closed, Intel moved for summary judgment of no infringe-
ment and the parties filed cross-motions for summary judg-
ment on the license defense. In December 2023, the district
court granted summary judgment in Intel’s favor on the
’836 and ’922 patents; denied summary judgment of non-
infringement on the ’806 and ’672 patents; and denied the
cross-motions over the licensing defense.
Shortly thereafter, VLSI granted Intel a covenant not
to sue on the ’806 and ’672 patents. Concluding that VLSI’s
unconditional promise not to sue for infringement of those
patents deprived it of jurisdiction over Intel’s license de-
fense, the district court denied Intel’s request to proceed to
trial on that issue. Two days later, on January 26, 2024,
Intel moved to amend its answer to assert a counterclaim
for a declaratory judgment that Intel is licensed to VLSI’s
entire patent portfolio. On February 9, 2024, the district
court granted that motion, concluding that amendment
was permissible under Rules 15 and 16 of the Federal
Rules of Civil Procedure. VLSI then filed this petition. 1
We have jurisdiction. 28 U.S.C. §§ 1295(a)(1) and 1651.
“Mandamus may be employed in exceptional circum-
stances to correct a clear abuse of discretion or usurpation
of judicial power by a trial court.” In re Calmar, Inc., 854
F.2d 461, 464 (Fed. Cir. 1988) (citing, among others,
1 After this petition was filed, the district court va-
cated its previously-scheduled trial date.
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IN RE VLSI TECHNOLOGY LLC 3
Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S.
271, 289 (1988)). Due to the exceptional nature of this re-
lief, a petitioner must generally show that: (1) it has a clear
and indisputable right to relief; (2) it does not have any
other adequate method of obtaining relief; and (3) the “writ
is appropriate under the circumstances.” Cheney v. U.S.
Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004) (citation
omitted). VLSI fails to make that showing here.
VLSI primarily contends that the district court cannot
hold a trial over Intel’s license counterclaim after having
found it lacked jurisdiction over Intel’s prior related affirm-
ative defense. Alternatively, VLSI argues that the district
court should decline jurisdiction to allow these issues to be
resolved in other proceedings. But VLSI has available
means of obtaining relief on those issues without our im-
mediate intervention. The district court’s order allowing
Intel to amend its answer expressly contemplated explor-
ing these issues in subsequent briefing, and VLSI has now
raised these challenges in its February 23, 2024 motion to
dismiss, Docket No. 868. If unsuccessful in those efforts
before the district court, VLSI can also meaningfully raise
these challenges on appeal after final judgment. 2
VLSI has also not shown the district court abused its
discretion in finding good cause for Intel to amend its an-
swer to add a counterclaim. Applying the governing legal
2 Attempting to sidestep this requirement, VLSI in-
vokes cases that have recognized mandamus “may be used
in narrow circumstances where doing so is important to
‘proper judicial administration.’” In re Micron Tech., Inc.,
875 F.3d 1091, 1095 (Fed. Cir. 2017) (quoting La Buy v.
Howes Leather Co., 352 U.S. 249, 259–60 (1957)). But VLSI
has identified no “basic, unsettled, recurring legal issues
over which there is considerable litigation producing dis-
parate results” that we previously have found sufficient for
this exception to apply. Micron, 875 F.3d at 1095.
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4 IN RE VLSI TECHNOLOGY LLC
standards, the district court made a case-specific determi-
nation of good cause having found that Intel acted dili-
gently in moving to amend its answer after the order
finding the affirmative defense moot, that the prejudice to
VLSI was minimal since VLSI had long been on notice of
the issue, and that it would not be futile to allow Intel to
amend to include the counterclaims, particularly in light of
this court’s decision reversing the Texas district court on
the same issue. VLSI, 87 F.4th at 1349–52.
We need not address whether the court has subject
matter jurisdiction over the counterclaim at this stage.
The district court has a pending motion before it that will
address jurisdiction in the first instance. We only note that
Intel’s motion to amend its answer was filed after the court
determined there were no remaining claims, such that no
case or controversy remained before the court.
Accordingly,
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT
March 18, 2024
Date