United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
GILSCRAP, UNITED STATES DISTRICT JUDGE
the Court is Defendant HTC Corporation's
(“HTC”) Motion for Partial Judgment on the
Pleadings of Counts II and III (“the Motion”).
(Dkt. No. 40). Pursuant to Fed.R.Civ.P. 12(c), HTC seeks
judgment on the pleadings with respect to Counts II and III
of the complaint filed by Plaintiff Lemaire Illumination
Technologies, LLC (“Lemaire”). Having considered
the Motion, and for the reasons described herein, the Court
finds it should be and hereby is DENIED.
However, in view of Lemaire's cancellation of the claims
at issue in Counts II and III, the Court sua sponte
DISMISSES AS MOOT both Count II and Count
III of Lemaire's complaint.
Factual and Procedural Background
January 23, 2018, Lemaire filed a complaint alleging that HTC
had infringed three of its patents: U.S. Patent No. 6, 095,
661 (“the '661 Patent”), U.S. Patent No. 6,
588, 390 (“the '390 Patent”), and U.S. Patent
No. 9, 119, 266 (“the '266 Patent”). (Dkt.
No. 1). The complaint's infringement allegations are
organized into three counts-one for each allegedly infringed
patent. Specifically, Count I alleges that HTC
“infringes one or more claims of the '661 Patent .
. . including claim 34 of the '661 Patent.”
(Id. at 15). Count II alleges that HTC
“infringes one or more claims of the '390 Patent .
. . including claim 19 of the '390 Patent.”
(Id. at 18-19). Count III alleges that HTC
“infringes one or more claims of the '266 Patent .
. . including claim 9 of the '266 Patent.”
(Id. at 22).
required by Local Patent Rule 3-1, Lemaire served its
infringement contentions on August 28, 2018. (Dkt. No. 40 at
2). Rule 3-1 requires plaintiffs to identify “[e]ach
claim of each patent in suit that is allegedly infringed by
each opposing party.” P.R. 3-1(a). For Count II,
Lemaire identified only claim 19 of the '390 Patent and
for Count III, Lemaire identified claim 9 of the '266
Patent. (See Id. at 2; Dkt. No. 44 at 3). Both
Lemaire and HTC agree that those are the only claims at issue
for Counts II and III, respectively. (Dkt. No. 40 at 2; Dkt.
No. 44 at 3).
this action was pending, HTC filed parallel petitions for
inter partes review challenging the validity of
several claims in each asserted patent, including claim 19 of
the '390 Patent and claim 9 of the '266 Patent. In
response, Lemaire filed a statutory disclaimer that canceled
both of those claims, as well as other claims. See HTC
Corp. v. Lemaire Illumination Techs., LLC, IPR
2009-00091, Paper No. 6, Ex. No. 2008 (P.T.A.B. Feb. 7, 2019)
(disclaiming claims 9, 10, 19, 20, 21, 22, and 23 of the
'390 Patent); HTC Corp. v. Lemaire Illumination
Techs., LLC, IPR 2009-00092, Paper No. 6, Ex. No. 2011
(P.T.A.B. Feb. 8, 2019) (disclaiming claims 1, 3, 4, 6-16,
and 18-20 of the '266 Patent); accord 35 U.S.C.
§ 253 (granting patentee authority to disclaim issued or
pending claims); 37 C.F.R. 1.321 (implementing § 253).
At HTC's unopposed request, this Court took judicial
notice of both of Lemaire's statutory disclaimer filings.
(Dkt. No. 43).
brings the present Motion seeking partial judgement on the
pleadings pursuant to Fed.R.Civ.P. 12(c). HTC argues that
partial judgment on the pleadings is appropriate because
Lemaire has no remaining infringement claims for either Count
II or Count III. (Dkt. No. 40). Lemaire agrees that it has no
remaining infringement claims for either Count, but argues
that relief under Rule 12(c) is overbroad because it may
unintentionally create claim preclusion for all
claims in the '390 Patent and '266 Patent, whether
asserted in this case or not. (Dkt. No. 44). HTC replies that
some degree of claim preclusion may well be justified, and
accuses Lemaire of engaging in piecemeal litigation because
Lemaire has brought another patent infringement case in the
Western District of Washington on different claims of the
same three patents asserted in this case. (Dkt. No. 48 at
4-5). Neither party briefed the mootness issue.
patentee's statutory disclaimer “relinquishes the
rights of the patent owner” and cancels the claims
subject to the disclaimer. Rembrandt Wireless Techs., LP
v. Samsung Elecs. Co., 853 F.3d 1370, 1383 (Fed. Cir.
2017); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir.
1996). “[T]he patent is viewed as though the disclaimed
claims had never existed in the patent.”
Guinn, 96 F.3d at 1422 (citing Altoona Publix
Theatres, Inc. v. Am. Tri-Ergon Corp., 294 U.S. 477, 492
(1935)). As a result, any action or cause based on those
canceled claims is rendered moot, and must be dismissed.
Fresenius USA, Inc. v. Baxter Int'l, Inc., 721
F.3d 1330, 1336-37 (Fed. Cir. 2013) (quoting Moffitt v.
Garr, 66 U.S. 273, 283 (1861)).
courts “are under an independent obligation to
examine” whether a case has become moot even if the
issue has not been raised by the parties. McCorvey v.
Hill, 385 F.3d 846, 848 (5th Cir. 2004); Rocky v.
King, 900 F.2d 864, 866 (5th Cir. 1990) (“[A]
mootness issue quite clearly can be raised sua
sponte if not addressed by the parties.”). Since
Article III of the Constitution only permits federal courts
to adjudicate a case or controversy, a mooted action- which
presents no case or controversy-falls outside the
subject-matter jurisdiction of the federal courts.
Genesis Healthcare Corp. v. Symczyk, 569 U.S. 66, 79
(2013) (holding that suit became moot and “was,
therefore, appropriately dismissed for lack of subject-matter
jurisdiction”); see also Liner v. Jafco,
Inc., 375 U.S. 301, 306 (1964) (“[L]ack of
jurisdiction to review moot cases derives from the
requirement of Article III of the Constitution under which
the exercise of judicial power depends upon the existence of
a case or controversy.”); accord Hogan v. Miss.
Univ. for Women, 646 F.2d 1116, 1117 (5th Cir. 1981),
aff'd, 458 U.S. 718 (1982).
for mootness must be without prejudice because federal courts
lack jurisdiction to reach the merits of a mooted claim.
Target Training Int'l, Ltd. v. Extended Disc N. Am.,
Inc., 645 Fed.Appx. 1018, 1025 (Fed. Cir. 2016)
(“[A] dismissal for mootness is a dismissal for lack of
jurisdiction. A dismissal for lack of jurisdiction is not a
dismissal on the merits. Rather, the Supreme Court has
specifically rejected deciding the merits of a case where the
court lacks jurisdiction because jurisdiction is a threshold
question, and ‘[w]ithout jurisdiction the court cannot
proceed at all in any cause.'”); accord Topper
v. Progressive Cty. Mut. Ins. Co., 598 Fed.Appx. 299,
300 (5th Cir. 2015) (“[D]ismissal for lack of subject
matter jurisdiction should . . . [be] without prejudice, as a
district court is unable to reach the merits of claims over
which it has no subject matter jurisdiction.”).
Similarly, summary judgment and judgment on the pleadings are
inappropriate once a claim becomes moot because both
judgements address the merits of an asserted claim. See
SHFL Entm't, Inc. v. DigiDeal Corp., 729 Fed.Appx.
931, 932 (reversing district court's grant of summary
judgment based on cancelation of patent claims and remanding
for dismissal of the canceled claims as moot).
dismissing the mooted claims, the district court must proceed
with any remaining live claims. See Id. (ordering
the district court to examine potentially live patent claims
rather than requiring the patentee to refile a new action).
Court DENIES HTC's Motion for Partial
Judgment on the Pleadings because it addresses the merits of
mooted claims for patent infringement. See
Fresenius, 721 F.3d at 1336- 37; SHFL
Entm't, 729 Fed.Appx. at 932. The only patent
infringement claims in Counts II and III- claim 19 of the
'390 Patent and claim 9 of the '266 Patent,
respectively-became moot once Lemaire filed its statutory
disclaimer of those claims with the Patent and Trademark
Office. See Rembrandt, 853 F.3d at 1383;
Fresenius, 721 F.3d at 1336-37. As a result, the
Court “is unable to reach the merits” of the
patent infringement claims contained in Counts II and III,
and must dismiss both counts without prejudice as moot.
See Topper, 598 Fed.Appx. at 300; Target
Training, 645 Fed.Appx. at 1025; SHFL
Entm't, 729 Fed.Appx. at 932. Since the parties do
not dispute that the Court maintains jurisdiction over Count
I, the Court limits its dismissal to Counts II and III and
the claims therein, instead ...