INTELLECTUAL VENTURES I LLC, INTELLECTUAL VENTURES II LLC, Plaintiffs-Appellants
CAPITAL ONE FINANCIAL CORPORATION, CAPITAL ONE BANK (USA), NATIONAL ASSOCIATION, CAPITAL ONE, NATIONAL ASSOCIATION, Defendants-Appellees
from the United States District Court for the District of
Maryland in No. 8:14-cv-00111-PWG, Judge Paul W. Grimm.
Neville Feinberg, Feinberg Day Alberti & Thompson LLP,
Menlo Park, CA, argued for plaintiffs-appellants. Also
represented by Marc Belloli, Elizabeth Day, Clayton W.
Thompson, II; Eric F. Citron, Goldstein & Russell, P.C.,
Matthew J. Moore, Latham & Watkins LLP, Washington, DC,
argued for defendants-appellees. Also repre- sented by
Gabriel Bell, Adam Michael Greenfield; Jeffrey G. Homrig,
Menlo Park, CA; Robert A. Angle, Dabney Jefferson Carr, IV,
Troutman Sanders LLP, Richmond, VA; Kenneth R. Adamo, David
William HlGER, Kirkland & Ellis LLP, Chicago, IL.
Prost, Chief Judge, WALLACH and Chen, Circuit Judges.
Ventures I LLC and Intellectual Ventures II LLC
(collectively, "IV") appeal from a final decision
of the United States District Court for the District of
Maryland finding all claims of U.S. Patent No. 7, 984, 081
("'081 patent") and U.S. Patent No. 6, 546, 002
("'002 patent") ineligible under 35 U.S.C.
§ 101 and barring IV from pursuing its infringement
claims of U.S. Patent No. 6, 715, 084 ("'084
patent") under a collateral estoppel (issue preclusion)
theory. For the reasons discussed below, we
Capital One Financial Corporation, Capital One Bank (USA),
National Association, Capital One, and National Association
(collectively, "Capital One"), alleging
infringement of the '084 patent, the '081 patent, and
the '002 patent (collectively,
"patents-in-suit") in the United States District
Court for the District of Maryland. In response, Capital One
asserted antitrust counterclaims against IV under the Sherman
Act and moved for sum- mary judgment on IV's infringement
claims, arguing that the '081 and '002 patents are
invalid under 35 U.S.C. §101.
related proceeding, the United States District Court for the
Southern District of New York entered a partial summary
judgment order of ineligibility under § 101 for the
'084 patent. See Intellectual Ventures II, LLC v. JP
Morgan Chase & Co., No. 13-cv-3777-AKH, 2015 WL
1941331, at *17 (S.D.N.Y. Apr. 28, 2015)
("JPMCy, J.A. 1343-74. Relying on the
JPMC court's partial summary judgment order,
Capital One moved for summary judgment in the District of
Maryland under a collateral estoppel theory to bar IV's
infringement action on those patents.
response to Capital One's summary judgment motions, the
district court invalidated the '081 and '002 patents
under § 101 and barred IV from proceeding on its
infringement claims as to the '084 patent under a
collateral estoppel theory based on the JPMC
court's findings. Having granted Capital One's
summary judgment motion on collateral estoppel grounds, the
District of Maryland elected not to independently reach the
merits of the '084 patent's eligibility under §
101. After disposing of the patents-in-suit, and over
IV's objection, the district court certified its judgment
under Federal Rule of Civil Procedure 54(b) so that this
appeal could proceed concurrently with Capital One's
antitrust counterclaims in the District of
Maryland. IV filed its appeal. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
appeal, IV raises a number of issues regarding the
proceedings below: (1) IV argues that the district court
abused its discretion by certifying this appeal under Rule
54; (2) IV appeals the district court's determination
that it is collaterally estopped from pursuing its patent
infringement claims as to the '084 patent; and (3) IV
appeals the district court's determination that the
'081 and '002 patents are invalid under § 101.
We take each issue in turn.
review the district court's decision to certify a partial
final judgment under Rule 54(b) for an abuse of discretion.
See Sears, Roebuck & Co. v. Mackey, 351 U.S.
427, 437 (1956). On appeal, IV argues that the district court
erred by merely providing a two-sentence Rule 54(b)
certification statement without any specific findings or
reasoning to support its conclusion. IV also asserts that
because the district court did not make any findings or
provide a rationale, any deference we owe to the district
court "is nullified" under Braswell Shipyards,
Inc. v. Beazer E., Inc., 2 F.3d 1331, 1335-36 (4th Cir.
1993). Aside from attacking the sufficiency of the district
court's reasoning, IV argues that the close
interrelationship between its infringement claims and Capital
One's antitrust counterclaims weighs against
certification. IV therefore maintains that we should vacate
the certification and remand the appeal.
One responds that the district court's express finding of
"no just reason for delay" supports its decision to
certify. It also cites the district court's additional
certification reasoning in response to IVs motion to vacate
the Rule 54(b) judgment. See J.A. 1728 (explaining
why Rule 54(b) certification would create a more efficient
use of judicial resources under this case's facts and
procedural posture). Regarding its counterclaims, Capital One
argues that the antitrust issues are not sufficiently
interrelated to IV's infringement claims because its
counterclaims implicate IV's patent portfolio, which
encompasses roughly 3, 500 patents.
agree with Capital One that the district court did not abuse
its discretion in certifying the appeal under Rule 54(b).
Under that rule, "[w]hen an action presents more than
one claim for relief . . . the court may direct entry of
final judgment as to one or more, but fewer than all, claims
or parties only if the court expressly determines that there
is no just reason for delay." Fed.R.Civ.P. 54(b).
regarding the sufficiency of the district court's
findings, we observe that the district court set forth its
reasoning for certification in two separate, independent
orders. See J.A. 55 (concluding that "there is
no just reason for delay[ing]" entry of judgment with
the antitrust claims still pending in the initial motion);
J.A. 1727-28 (weighing the potential benefits of reserving
final judgment under a Rule 60 motion and concluding that
judicial economy supports certification). Although the
district court's initial ruling did not set forth a
lengthy analysis in support of certification, it expressly
determined that there was no just reason for delay. J.A. 55.
Beyond this, the district court subsequently explained why
judicial economy supports its initial
determination. J.A. 1728. Regarding the sufficiency of
its analysis, therefore, we conclude that the district court
did not abuse its discretion because it met the standard set
forth by the rule.
we review the extent to which the existence of Capital
One's counterclaims affect the analysis. To do so, we may
consider-among other factors-"the relationship between
the adjudicated and unadjudicated claims." Braswell
Shipyards, 2 F.3d at 1335-36. Here, Capital One's
antitrust counterclaims implicate IV's patent portfolio
of roughly 3, 500 patents. J.A. 3026-27. Yet IV asserts only
a narrow subset (the patents-in-suit) of that broader
portfolio. Id. Further, the scope of Capital
One's antitrust counterclaims transcends issues of mere
infringement. See id. (alleging, among other things,
wrongful conduct, concealing the scope of its portfolio, and
demanding excessive licensing rates). Indeed, the mere
existence of some factual overlap between the parties'
claims and counterclaims does not necessarily lead to the
conclusion that the district court abused its discretion.
See, e.g., W.L. Gore & Assocs. v. Int'l Med.
Prosthetics Research Assocs.,975 F.2d 858, 864 (Fed.
Cir. 1992) (recognizing that the factual overlap on one
aspect of a counterclaim is not adequate to show an abuse of
discretion). Under these facts, we conclude that the ...