In re Roche Molecular Systems, Inc.

• Decision Date: 01 February 2008
• Docket Number: Misc. No. 854.
• Parties: In re ROCHE MOLECULAR SYSTEMS, INC., Roche Diagnostics Corporation, and Roche. Diagnostics Operations, Inc., Petitioners.
• Court: U.S. Court of Appeals — Federal Circuit

516 F.3d 1003

In re ROCHE MOLECULAR SYSTEMS, INC., Roche Diagnostics Corporation, and Roche. Diagnostics Operations, Inc., Petitioners.

Misc. No. 854.

United States Court of Appeals, Federal Circuit.

February 1, 2008.

Adrian M. Pruetz, Pruetz Law Group, LLP, of El Segundo, CA, for petitioners. With her on the petition was Erica J. Pruetz. Of counsel on the petition were Brian C. Cannon and Tun-Jen Chiang, Quinn Emanuel Urquhart Oliver & Hedges LLP, of Redwood Shores, CA.

Ricardo Rodriguez, Cooley Godward Kronish LLP, of Palo Alto, CA, for respondents

The Board of Trustees of the Leiand Stanford Junior University, et al. With him on the response were Michelle S. Rhyu and Benjamin G. Damstedt.

Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and MAYER, Circuit Judge.

Order for the Court filed PER CURIAM. Dissenting order filed by Circuit Judge NEWMAN.

ORDER

PER CURIAM.

Roche Molecular Systems, Inc. et al. (Roche) petition for a writ of mandamus to direct the United States District Court for the Northern District of California to (1) vacate its April 16, 2007 order granting in part The Leland Stanford Jr. University's (Stanford) motion for summary judgment and denying Roche's motion for summary judgment and (2) enter judgment in favor of Roche. Stanford opposes. Roche moves for leave to reply, with reply attached. Stanford opposes and moves, in the alternative, for leave to file a surreply, with surreply attached. Roche opposes Stanford's motion for leave to file a surreply.

Stanford sued Roche for patent infringement. On cross motions for summary judgment, the district court determined, inter alia, that Roche was barred from asserting (1) that it was the owner of the patents, (2) that it had a license, and (3) that Stanford lacked standing. Roche petitions for a writ of mandamus to direct the district court to vacate its summary judgment order and to enter judgment in favor of Roche.

The remedy of mandamus is available only in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461, 464 (Fed.Cir. 1988). A party seeking a writ bears the burden of proving that it has no other means of attaining the relief desired, Mallard v. U.S. Dist. Court for the Southern Dist. of Iowa, 490 U.S. 296, 309, 109 S.Ct. 1814, 104 L.Ed.2d 318 (1989), and that the right to issuance of the writ is "clear and indisputable." Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980). A court may deny mandamus relief "even though on normal appeal, a court might find reversible error." In re Gordis Corp., 769 F.2d 733, 737 (Fed.Cir.1985); see also United States v. Watson, 66 C.C.P.A. 107, 603 F.2d 192, 196-97 (1979) ("the writ will not issue to cure the mere commission of reversible error"). That a petitioner may suffer hardship, inconvenience, or an unusually complex trial does not provide a basis for a court to grant mandamus. See Watson, 603 F.2d at 195 ("Neither the general rule limiting the appellate function to review of final judgments, nor the statute so limiting our appellate function . . . can be evaded by use of an extraordinary writ to avoid delay entailing hardship, inconvenience, or an unnecessary trial") (citations omitted); cf. Federal Trade Comm'n v. Standard Oil Co., 449 U.S. 232, 244, 101 S.Ct. 488, 66 L.Ed.2d 416 (1980) (expenses and burdens of defending action do not constitute irreparable harm).

Roche argues that Stanford lacks standing and thus this court should direct the district court to vacate its summary judgment order and enter judgment in Roche's favor. Stanford asserts that Roche has not shown that it has a clear and indisputable right to a writ because the relief it seeks may be obtained on direct appeal after the district court enters a final judgment.

We determine that Roche has not shown that it cannot obtain the relief it seeks by review after final judgment Thus, mandamus relief is not appropriate.

Accordingly,

IT IS ORDERED THAT:

(1) The petition for a writ of mandamus is denied.

(2) Roche's motion for leave to reply is granted.

(3) Stanford's motion for leave to file a surreply is granted.

NEWMAN, Circuit Judge, dissenting.

I respectfully dissent. By declining this writ, the' court is permitting the trial to proceed on material errors of law. Absent our intervention, the scheduled trial will not include issues that can be dispositive of the entirety of the litigation and whose facts would remain unresolved. This is one of the rare cases in which the writ should be granted, for it meets the criteria for intervention by way of mandamus.

The district court ruled, on summary judgment, that Roche is barred by a California statute of limitations from presenting its license defenses to the charges of patent infringement. The court also ruled that in all events the Bayh-Dole Act was violated by the license rights in the contracts between Stanford and Cetus, rendering the licenses void. Thus the infringement trial, scheduled for July 2008, will proceed without development of any of Roche's defenses of license or assignment or shop right, although these issues involve some or all of the technology charged with infringement, and can dispose of the case.

The district court did not determine Roche's license rights to the subject matter in suit, instead holding that this defense was barred. Roche argues that the district court's rulings on the statute of limitations and the Bayh-Dole Act are incorrect as a matter of law. Postponing review of this law, as my colleagues have ruled, can result in trial of possibly unnecessary issues, while omitting critical issues that could resolve the dispute. This posture can only serve to extend the proceedings as well as the uncertainty as to important technology, serving no one, and least of all the interests of efficient justice.

Therefore I would grant the writ to the extent of reviewing the district court's rulings that (1) the California statute of limitations bars Roche from raising the defense of its right to practice the challenged technology, and (2) the Bayh-Dole Act voids any license grant in the Cetus/Stanford contracts. . . Resolution of these issues of law would permit exploration at trial of the facts relevant to the asserted rights concerning this technology, including determination of the scope of the licenses. Failure to resolve these issues would simply require another trial on the correct law.

DISCUSSION

Review by way of mandamus is appropriate only when the need for the writ is "clear and indisputable." Cheney v. U.S. Dist. Court for the District of Columbia, 542 U.S. 367, 380, 124 S.Ct. 2576, 159 L.Ed.2d 459 (2004); see Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 34, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980), and the petitioner reasonably has no other means of obtaining the relief desired. Mallard v. U.S. Dist. Court, 490 U.S. 296, 309, 109 S.Ct. 1814, 104 L.Ed.2d 318 (1989); cf. United States v. Watson, 66 C.C.P.A. 107, 603 F.2d 192, 197 (1979) (denying a requested writ that would have limited the issues of trial and review of countervailing duty). The "stringent standard" for mandamus, Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S. 271, 289, 108 S.Ct. 1133, 99 L.Ed.2d 296 (1988), has been met, for the district court resolved fundamental issues in ways that appear to be incorrect. These issues can resolve the dispute, but they have been removed from the forthcoming trial. Thus issuance of the writ is "necessary or appropriate in aid of [the courts'] respective jurisdictions and agreeable to the usages and principles of law." 28 U.S.C. § 1651.

The contracts between Stanford and Cetus/Roche

The district court held that the California four-year statute of limitations for contracts has run, barring any defense or counterclaim based on the license and other rights in the contracts between Stanford and Cetus. On this ground the district, court granted summary judgment that Cetus/Roche has no rights and can acquire none of the rights set forth in the contracts with Stanford.

Two written agreements are involved. A contract called a Materials Transfer Agreement (MTA) in 1988 provided the terms whereby Cetus agreed to train and assist Stanford scientists in connection with the polymerase chain reaction:

Cetus Corporation agrees to provide [Thomas C. Merigan and David Schwarz] with certain research substances and know-how [concerning polymerase chain reaction (PCR), and that the scientists will] inform CETUS, in confidence, of research results related to the Material, [and that] CETUS shall be free to use such data and information for any purpose . . In consideration of CETUS' providing of the Material, [Stanford], to the extent it is legally able to do so, hereby grants CETUS the first option to an exclusive license, at a reasonable royalty to be negotiated in good faith . . . or at CETUS' option, a nonexclusive license.

This agreement was signed for Stanford by Dr. Merigan, Dr. Schwartz, and Robert C. Baum, who was identified as Contract Officer and Stanford's "Authorized Representative." The district court found that:

The contract granted Cetus, by default, a free non-exclusive license. The contract further permitted Cetus to exercise an option to pay royalties for exclusivity. Either way, Cetus' right to use the inventions was secured by the MTA.

Memorandum and Order of April 16, 2007; at 25.

A few weeks later Stanford sent Dr. Mark Holodniy, a scientist at Stanford's Division of Infectious Diseases, to Cetus to learn about PCR for use in developing an assay for HIV nucleic acids. Dr. Holodniy executed a Visitor Confidentiality Agreement (VCA) that included the following provision:

If, as a consequence of my access to CETUS' facilities or information, I conceive of or make, alone or with others, ideas, inventions and improvements thereof or know-how related thereto that relate in any manner to the...