Am. Axle & Mfg., Inc. v. Neapco Holdings LLC

• Decision Date: 23 October 2020
• Docket Number: 2018-1763
• Citation: 977 F.3d 1379
• Parties: AMERICAN AXLE & MANUFACTURING, INC., Plaintiff-Appellant v. NEAPCO HOLDINGS LLC, Neapco Drivelines LLC, Defendants-Appellees
• Court: U.S. Court of Appeals — Federal Circuit

977 F.3d 1379

AMERICAN AXLE & MANUFACTURING, INC., Plaintiff-Appellant

v.NEAPCO HOLDINGS LLC, Neapco Drivelines LLC, Defendants-Appellees

2018-1763

United States Court of Appeals, Federal Circuit.

October 23, 2020

ON MOTION

Dyk, Circuit Judge.

ORDER

Plaintiff-appellant American Axle & Manufacturing, Inc. ("AAM") filed a motion to stay issuance of the mandate pending the filing of a petition for writ of certiorari in the Supreme Court. Defendants-appellees opposed the motion.

I

Federal Rule of Appellate Procedure 41 provides that a motion for stay of the mandate "must show that the petition would present a substantial question and that there is good cause for a stay." Fed. R. App. P. 41(d)(1). The Advisory Committee Notes state that "[t]he Supreme Court has established conditions that must be met before it will stay a mandate." Fed. R. App. P. 41, advisory committee's note to 1994 amendment (citing Robert L. Stern et al., Supreme Court Practice § 17.19 (6th ed. 1986)). In this respect, the Advisory Committee Notes refer to the standard established by the in-chambers opinions of the individual justices. See Stern et al., supra , § 17.19. The Supreme Court itself has approved this standard in Hollingsworth v. Perry , 558 U.S. 183, 190, 130 S.Ct. 705, 175 L.Ed.2d 657 (2010).

This standard requires that the applicant show "(1) a reasonable probability that four Justices will consider the issue sufficiently meritorious to grant certiorari; (2) a fair prospect that a majority of the Court will vote to reverse the judgment below; and (3) a likelihood that irreparable harm will result from the denial of a stay. In close cases the Circuit Justice or the Court will balance the equities and weigh the relative harms to the applicant and to the respondent." Id.

Chief Justice Roberts, acting as the Circuit Justice for this court, specifically applied that standard in a patent case, denying a stay solely for lack of irreparable injury. Teva Pharms. USA, Inc. v. Sandoz, Inc. , 572 U.S. 1301, 1301–02, 134 S.Ct. 1621, 188 L.Ed.2d 754 (2014) (Roberts, C.J., in chambers). After we held certain of Teva's patent claims invalid, Teva sought a stay in order to prevent market entry by the generic pharmaceutical company respondents. The Chief Justice noted that the first two requirements for a stay were met, because the Supreme Court had already granted certiorari and Teva had "shown a fair prospect of success on the merits." Id. at 1301, 134 S.Ct. 1621. But he denied a stay because a likelihood of irreparable injury was not shown, explaining that "[r]espondents acknowledge[d] that, should Teva prevail ... and its patent be held valid, Teva [would] be able to recover damages from respondents for past patent infringement" and therefore "the extraordinary relief that Teva [sought was] unwarranted." Id. at 1301–02, 134 S.Ct. 1621.

As a matter of Federal Circuit law, we interpret the Rule as requiring application of the standard articulated by the Supreme Court in Hollingsworth and the Justices’ in-chambers opinions. See Biodex Corp. v. Loredan Biomedical, Inc. , 946 F.2d 850, 858 (Fed. Cir. 1991) (Federal Circuit law, not regional circuit law, governs such matters).

II

In this case, AAM has not made the required showing of a likelihood of irreparable injury absent a stay. With respect to claim 22 and related claims, the decision of this court requires no further action by the district court since the claims have been held to be unpatentable. AAM argues that "[i]f the Supreme Court grants review and decides that the asserted claims of [AAM's patent] are patent eligible under § 101, this Court will have to recall its mandate to conform its disposition with such a decision." Mot. 14, ECF No. 136. This action, common to every case in which the Supreme Court does not affirm, is not irreparable harm.

With respect to claim 1 and related claims, the decision of this court remands to the district court for further proceedings. AAM argues that there is "good cause for a stay" because it "intends to petition for certiorari with regard to the entirety" of our judgment and argues that "[s]ignificant burdens and expenses would accrue" should the mandate issue because "the parties and district court would continue to litigate issues related to claim 1." Id. at 12–13. Continued litigation with respect to claim 1 cannot be irreparable injury. "Mere litigation expense, even substantial and unrecoupable cost, does not constitute irreparable injury." Renegotiation Bd. v. Bannercraft Clothing Co. , 415 U.S. 1, 24, 94 S.Ct. 1028, 39 L.Ed.2d 123 (1974) ; see also Commonwealth Oil Refin. Co. v. Lummus Co. , 82 S. Ct. 348, 349, 7 L.Ed.2d 334 (1961) (Harlan, J., in chambers) (denying motion for stay of the mandate where the only possible harm from denial of the stay was that it could "set in motion the machinery for arbitration and ... other matters affecting the possible future conduct of the arbitration"); Nara v. Frank , 494 F.3d 1132, 1133 (3d Cir. 2007) (need to "prepar[e] to commence trial within 120 days while simultaneously filing a petition for certiorari" was not irreparable injury under Rule 41 ); United States v. Microsoft Corp. , No. 00-5212, 2001 WL 931170, at *1 (D.C. Cir. Aug. 17, 2001) (denying motion to stay mandate under Rule 41 because movant "failed to demonstrate any substantial harm that would result from the reactivation of proceedings in the district court during the limited pendency of the certiorari petition.").

AAM has cited no authority suggesting that the prospect of further district court proceedings while the case is on review could constitute irreparable injury. AAM points to the Practice Note to this court's Rule 41, which reminds litigants that their right to seek certiorari is unaffected by the issuance of the mandate and, "[c]onsequently, a motion to stay the mandate should advance reasons for the stay beyond the mere intention to apply for certiorari, e.g., to forestall action in the trial court or agency that would necessitate a remedial order of the Supreme Court if the writ of certiorari were granted." Fed. Cir. R. 41 practice note. But that Practice Note would not displace the governing stay standard if they conflicted. Even by its own terms, moreover, the Practice Note's language does not support a conclusion that the trial court proceedings that might occur regarding claim 1 and related claims would support a stay. Under the standard applied by the Supreme Court, this is not a situation in which the Court would issue a "remedial order" staying our mandate if certiorari were granted since the only claimed irreparable injury is litigation cost.

We conclude that the irreparable injury requirement is not satisfied here. On this ground alone a stay is not warranted, quite apart from the merit or lack of merit of the petition for certiorari.

Accordingly,

IT IS ORDERED THAT :

The motion to stay the mandate pending the filing of a petition for writ of certiorari in the Supreme Court is denied.

Moore, Circuit Judge, concurring.

Today, we adopt the three-prong test for staying a mandate adopted by our sister circuits and several individual Justices. I write separately to elaborate on how those prongs apply here. While American Axle has established a reasonable probability that certiorari will be granted and a fair prospect that the majority of the Court will reverse, it fails to establish irreparable harm and thus a stay is not warranted.

I

The Supreme Court often grants certiorari to resolve circuit splits that render the state of the law inconsistent and chaotic. See, e.g. , Braxton v. United States , 500 U.S. 344, 347, 111 S.Ct. 1854, 114 L.Ed.2d 385 (1991) ("A principal purpose for which we use our certiorari jurisdiction ... is to resolve conflicts among the United States courts of appeals and state courts concerning the meaning of provisions of federal law."); see also Rogers v. Grewal , ––– U.S. ––––, 140 S. Ct. 1865, 1875, 207 L.Ed.2d 1059 (2020) (Thomas, J., dissenting from the denial of certiorari) ("This case gives us an opportunity to provide lower courts with much-needed guidance, ensure adherence to our precedents, and resolve a Circuit split. Each of these reasons is independently sufficient to grant certiorari."). What we have here is worse than a circuit split—it is a court bitterly divided.

As the nation's lone patent court, we are at a loss as to how to uniformly apply § 101. All twelve active judges of this court urged the Supreme Court to grant certiorari in Athena to provide us with guidance regarding whether diagnostic claims are eligible for patent protection. There is very little about which all twelve of us are unanimous, especially when it comes to § 101. We were unanimous in our unprecedented plea for guidance. But, as we acknowledged in our decisions in Athena, that holding was at heart a reticent application of Mayo to similar claims.

The current case is the progeny of neither Alice nor Mayo . It is our own dramatic expansion of a judicial exception to § 101. Section 101 is clear: "[w]hoever invents or discovers any new and useful process," like the claims here, "may obtain a patent." Yet, we have struggled to consistently apply the judicially created exceptions to this broad statutory grant of eligibility, slowly creating a panel-dependent body of law and destroying the ability of American businesses to invest with predictability. See Smart Sys. Innovations, LLC v. Chicago Transit Auth. , 873 F.3d 1364, 1377 (Fed. Cir. 2017) (Linn, J., dissenting-in-part and concurring-in-part) (characterizing § 101 doctrine as "indeterminate and often lead[ing] to arbitrary results"). Our confusion has driven commentators, amici, and every judge on this court to request Supreme Court clarification. See Athena Diagnostics, Inc. v. Mayo Collaborative Servs. , LLC, 927 F.3d 1333 (Fed. Cir. 2019). If a circuit split warrants certiorari, such an irreconcilable split in the nation's only patent court does likewise.

This case is a...