Today, Motorola Mobility filed a reply brief in support of its efforts to dismiss Apple’s Federal Circuit FRAND appeal (or at least transfer it to the 7th Circuit Court of Appeals). As you’ll recall, a few weeks ago, Motorola filed a unique motion to dismiss Apple’s appeal, claiming the Federal Circuit lacked jurisdiction because (for more info, see our original post on Motorola’s motion). Apple filed an opposition, asserting that the case was properly appealed to the Federal Circuit. In its relatively short reply, Motorola targets two particular assertions that Apple claims vest the Federal Circuit with jurisdiction: (1) that Apple’s declaratory judgment complaint was filed “in response” to a hypothetical complaint of patent infringement; and (2) that the dismissal of certain Apple claims without prejudice does not divest the Federal Circuit of jurisdiction.
Declaratory judgment and the hypothetical patent infringement claim
Motorola first argues in its reply that Apple’s complaint is not like a typical declaratory judgment claim for unenforceability that might follow a patent infringement complaint. Motorola claims that with its unenforceability claims, Apple sought “to hold an entire class of patents owned by Motorola [i.e., Motorola’s FRAND-pledged SEPs] to be unenforceable,” including patents never asserted against Apple. Motorola further contends that the FRAND-related unenforceability issues for the patents that were actually asserted against Apple have been litigated elsewhere, specifically in the ITC (Inv. No. 337-TA-745 — the ITC case that was the genesis for Apple’s claims on appeal here). (Here, Motorola not-so-subtly throws in an “and Apple lost” on those issues, as well). Lastly, Motorola claims that to the extent Apple has a need to litigate these patent-specific unenforceability claims in district court, it should logically do so in the infringement action that Motorola filed in parallel with its ITC complaint in the Western District of Wisconsin (an action currently stayed under 28 U.S.C. § 1659).
Essentially, Motorola appears to be arguing that the declaratory judgment action and the hypothetical patent infringement complaint should be matched in scope (i.e., patent to patent), and that Apple’s DJ complaint was far broader than anything Motorola could realistically or hypothetically assert.
Dismissal without prejudice
Apple has claimed that while its patent unenforceability claims were dismissed without prejudice, this should not divest the Federal Circuit of jurisdiction, because it could not simply re-file its claims and be in the same position as it was pre-suit. In its reply, Motorola notes that the Federal Circuit has previously found that a dismissal of patent claims without prejudice eliminates Federal Circuit jurisdiction. Furthermore, Motorola asserts that Apple was the one who sought to have the Western District of Wisconsin dismiss the case without prejudice, and should have to live with the consequences of that decision. Motorola accuses Apple of asking the Federal Circuit create a special exception based on the circumstances of the case here, but says that even under these circumstances, the appeal should still be dismissed or transferred.