Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 1 of 10
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`QUICKLOGIC CORPORATION,
`
`Plaintiff,
`
`v.
`
`KONDA TECHNOLOGIES, INC., et al.,
`
`Defendants.
`
`Case No. 5:21-cv-04657-EJD
`
`ORDER GRANTING IN PART AND
`DENYING IN PART QUICKLOGIC’S
`MOTION FOR JUDGMENT ON THE
`PLEADINGS; GRANTING IN PART
`AND DENYING IN PART
`DEFENDANTS’ MOTION TO
`DISMISS; AND ORDER TO SHOW
`CAUSE
`
`
`Re: ECF Nos. 66, 76
`
`
`
`
`
`
`
`
`
`This matter comes before the Court on cross-motions relating to the question of how
`
`Plaintiff QuickLogic Corporation’s (“QuickLogic”) declaratory judgment claims should be
`
`resolved after the Court dismissed the mirror image counterclaims with prejudice. QuickLogic
`
`filed a motion for judgment on the pleadings that each of its claims should be dismissed as moot.
`
`QuickLogic’s Mot. for J. on the Pleadings (“QuickLogic Mot.”), ECF No. 66. It also asks the
`
`Court to find it the prevailing party and award costs. Defendants Konda Technologies, Inc. and
`
`Venkat Konda (“Defendants”) oppose QuickLogic’s motion and also filed a cross-motion to
`
`dismiss the declaratory judgment claims for failure to state a claim and lack of subject-matter
`
`jurisdiction. Defs.’ Mot. to Dismiss (“Defs.’ Mot.”), ECF No. 76. Defendants further request that
`
`the Court permit discovery into QuickLogic’s claims. For the reasons set forth below, the Court
`
`finds that it lacks subject-matter jurisdiction over QuickLogic’s non-breach of contract claim, that
`
`QuickLogic’s patent non-infringement claims are moot, that discovery is not appropriate at this
`
`stage of litigation, and that QuickLogic is the prevailing party and entitled to costs. As such, the
`
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`1
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 2 of 10
`
`
`
`Court GRANTS IN PART and DENIES IN PART QuickLogic’s motion for judgment on the
`
`pleadings, and it GRANTS IN PART and DENIES IN PART Defendants’ motion to dismiss.
`
`I.
`
`BACKGROUND
`
`On June 16, 2021, QuickLogic filed a complaint for declaratory judgment. Compl., ECF
`
`No. 1. In its complaint, QuickLogic alleged non-breach of a 2010 licensing agreement between
`
`the parties (the “2010 Agreement”) and non-infringement of certain patents owned by Defendants.
`
`As to the non-infringement claims, QuickLogic explained that it had licensed certain patent rights
`
`from Defendants pursuant to the 2010 Agreement, so it was seeking a declaration of non-
`
`infringement only as to patents that were unlicensed. Id. ¶ 19.
`
`On January 19, 2022, Defendants answered and filed counterclaims alleging patent
`
`infringement, breach of contract, breach of the implied covenant of good faith and fair dealing,
`
`and breach of confidential relationship. Answer & Countercls., ECF No. 35. Thereafter, on
`
`August 2, 2022, the Court dismissed all counterclaims. Aug. 2, 2022 Order (“Prior Order”), ECF
`
`No. 62. The Court permitted Defendants to amend only their breach of contract counterclaim, and
`
`only to the extent they were claiming that QuickLogic failed to follow the informal dispute
`
`resolution procedures called for by the 2010 Agreement. Id. at 14, 17. The Court set the deadline
`
`for amendment as September 1, 2022, and it ordered that failure to amend by the deadline would
`
`result in dismissal with prejudice. Id. at 17. Defendants did not amend their counterclaim.
`
`Subsequently, on September 29, 2022, QuickLogic filed its motion for judgment on the
`
`pleadings. See QuickLogic Mot. On December 14, 2022, Defendants filed their opposition and
`
`cross-motion to dismiss, which they styled as a motion under Federal Rule of Civil Procedure
`
`12(h). See Defs.’ Mot. Because Rule 12(h) describes when certain defenses are waived but does
`
`not provide a basis for raising those defenses in a motion, the Court will construe Defendants’
`
`cross-motion as one raised under Rules 12(b)(1) and 12(c).
`
`II.
`
`LEGAL STANDARD
`
`A.
`
`Rule 12(c) Motion
`
`Rule 12(c) permits a party to move for judgment on the pleadings “[a]fter the pleadings are
`
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`2
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 3 of 10
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`closed—but early enough not to delay trial.” Fed. R. Civ. P. 12(c). “Because a Rule 12(c) motion
`
`is ‘functionally identical’ to a Rule 12(b)(6) motion,” courts apply the same standard for both.
`
`Gregg v. Haw., Dep’t of Pub. Safety, 870 F.3d 883, 887 (9th Cir. 2017) (quoting Cafasso v. Gen.
`
`Dynamics C4 Sys., Inc. 637 F.3d 1047, 1054 n.4 (9th Cir. 2011)). On a Rule 12(c) motion, courts
`
`“must accept all factual allegations in the complaint as true and construe them in the light most
`
`favorable to the non-moving party.” Fleming v. Pickard, 581 F.3d 922, 925 (9th Cir. 2009). A
`
`complaint will survive such a motion only if it “contain[s] sufficient factual matter, accepted as
`
`true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678
`
`(2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
`
`B.
`
`Rule 12(b)(1) Motion
`
`A party may contest subject-matter jurisdiction by filing a Rule 12(b)(1) motion. Fed. R.
`
`Civ. P. 12(b)(1). A challenge may be “facial,” where the party argues that there is a lack of
`
`jurisdiction on the face of the complaint, or it may be “factual,” where the party presents evidence
`
`demonstrating the lack of jurisdiction on the facts of the case. Johnson v. Tom, 2019 WL
`
`4751930, at *1 (N.D. Cal. Sept. 30, 2019) (first citing Wolfe v. Strankman, 392 F.3d 358, 362 (9th
`
`Cir. 2004); and then citing Safe Air for Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004)).
`
`Here, Defendants raise a facial attack because they submit no evidence in support of their motion.
`
`Thus, the Court evaluates Defendants’ jurisdictional challenge “as it would a motion to dismiss
`
`under Rule 12(b)(6): Accepting [QuickLogic’s] allegations as true and drawing all reasonable
`
`inferences in [QuickLogic’s] favor, the [C]ourt determines whether the allegations are sufficient as
`
`a legal matter to invoke [its] jurisdiction.” Leite v. Crane Co., 749 F.3d 1117, 1121 (9th Cir.
`
`2014) (citing Pride v. Correa, 719 F.3d 1130, 1133 (9th Cir.2013)).
`
`III. DISCUSSION
`
`As the Court’s subject-matter jurisdiction is a threshold matter, the Court first addresses
`
`the issue of its jurisdiction over QuickLogic’s non-breach of contract claim before turning the
`
`parties’ arguments regarding mootness. The Court then addresses Defendants’ request for
`
`discovery and QuickLogic’s request to be declared the prevailing party and awarded costs.
`
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`3
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 4 of 10
`
`
`
`A.
`
`Subject-Matter Jurisdiction
`
`The federal courts “are courts of limited jurisdiction.” Gunn v. Minton, 568 U.S. 251, 256
`
`(2013) (citation omitted). So, if a district court “determines at any time that it lacks subject-matter
`
`jurisdiction, [it] must dismiss the action.” Fed. R. Civ. P. 12(h)(3). Although QuickLogic brings
`
`its claims under the Federal Declaratory Judgment Act, that statute “does not by itself confer
`
`federal subject-matter jurisdiction.” Nationwide Mut. Ins. Co. v. Liberatore, 408 F.3d 1158, 1161
`
`(9th Cir. 2005). Instead, QuickLogic was “required to plead an independent basis for federal
`
`jurisdiction.” Id.
`
`Here, it is apparent that the Court does not have original jurisdiction over QuickLogic’s
`
`non-breach of contract claim. Contract is an archetypical state law cause of action, so federal
`
`question jurisdiction does not apply. See 28 U.S.C. § 1331. The complaint also pleads that all
`
`parties are California citizens, so diversity jurisdiction does not apply either. See 28 U.S.C.
`
`§ 1332. And QuickLogic identifies no other statute conferring original jurisdiction as to its non-
`
`breach of contract claim.
`
`However, even when a court lacks original subject-matter jurisdiction, it may still exercise
`
`supplemental jurisdiction “over all other claims that are so related to claims in the action within
`
`such original jurisdiction that they form part of the same case or controversy under Article III of
`
`the United States Constitution.” 28 U.S.C. § 1367(a). In turn, claims are part of the same case or
`
`controversy under Article III if they “derive from a common nucleus of operative fact” such that a
`
`plaintiff “would ordinarily be expected to try them all in one judicial proceeding.” United Mine
`
`Workers of Am. v. Gibbs, 383 U.S. 715, 725 (1966).
`
`Defendants argue that supplemental jurisdiction is lacking because the alleged breach of
`
`the 2010 Agreement’s informal dispute resolution clause is wholly unrelated to any of the patent
`
`infringement alleged in this action. Defs.’ Mot. at 12. In their view, this means that the non-
`
`breach of contract claim does not share a common nucleus of operative fact with QuickLogic’s
`
`patent non-infringement claims (over which the Court does have original jurisdiction under the
`
`federal patent laws). Id. QuickLogic responds that Defendants have “previously embraced this
`
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 5 of 10
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Court’s jurisdiction for [their] breach [of contract] counterclaim.” QuickLogic Reply at 14, ECF
`
`No. 77. QuickLogic also suggests that the breach of contract counterclaim was based in part of
`
`QuickLogic’s alleged patent infringement, creating a common nucleus of operative fact between
`
`the contract and patent counterclaims. Id. QuickLogic does not explain why its focuses on
`
`Defendants’ breach of contract counterclaim rather than its own non-breach of contract claim, but
`
`it appears to be implicitly arguing that a finding of jurisdiction as to the counterclaims is equally
`
`applicable to QuickLogic’s claims because the counterclaims are mirror images of QuickLogic’s
`
`claims.
`
`At the outset, the Court notes that “[s]ubject-matter jurisdiction can never be waived or
`
`forfeited,” so it is irrelevant that Defendants purportedly “embraced” the Court’s jurisdiction
`
`previously. Gonzalez v. Thaler, 565 U.S. 134, 141 (2012). Indeed, objections to subject-matter
`
`jurisdiction “may be resurrected at any point in the litigation, and a valid objection may lead a
`
`court midway through briefing to dismiss a complaint in its entirety.” Id. This is so even if
`
`“[m]any months of work on the part of the attorneys and the court may be wasted.” Id. (quoting
`
`Henderson ex rel. Henderson v. Shinseki, 562 U.S. 428, 435 (2011)). Consequently, the Court
`
`must substantively consider whether it has jurisdiction over the non-breach of contract claim. The
`
`Court finds that it does not.
`
`Although QuickLogic suggests the contract and patent infringement claims in this action
`
`are inextricably linked, QuickLogic leaves out an important fact: The patents for which
`
`QuickLogic raised claims of non-infringement are not the patents that were licensed under the
`
`2010 Agreement. Compl. ¶ 19. Compare id., with Compl., Ex. 3 (“2010 Agreement”) at 7–8,
`
`ECF No. 1-3 (list of licensed intellectual property). In fact, QuickLogic takes pains to emphasize
`
`this point in its complaint, stating that, because “QuickLogic is licensed to certain patent rights in
`
`the Patent Portfolio pursuant to the 2010 Agreement . . . only the unlicensed patents in the Patent
`
`Portfolio are at issue in this case.” Compl. ¶ 19. Since the patents for which QuickLogic seeks a
`
`declaration of non-infringement are mutually exclusive with the intellectual property licensed
`
`under the 2010 Agreement, its patent non-infringement claims do not share a common nucleus of
`
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`5
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 6 of 10
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`operative fact with its non-breach of contract claim. As such, the Court does not have
`
`supplemental jurisdiction over QuickLogic’s non-breach of contract claim.1
`
`Accordingly, the Court GRANTS Defendants’ motion insofar as it seeks to dismiss the
`
`non-breach of contract declaratory relief claim for lack of jurisdiction and DENIES QuickLogic’s
`
`motion to the extent it seeks to dismiss the same claim as moot.
`
`B. Mootness
`
`“A federal court has no authority to issue a declaratory judgment apart from that authority
`
`granted it by the Declaratory Judgment Act, which requires by its terms that an ‘actual
`
`controversy’ exist between the parties before the court.” Gladwell Governmental Servs., Inc. v.
`
`Cnty. of Marin, 2005 WL 2656964, at *1 (N.D. Cal. Oct. 17, 2005) (citing 28 U.S.C. § 2201;
`
`Aetna Life Ins. v. Haworth, 300 U.S. 227, 240 (1937)). The “actual controversy” must exist “at all
`
`stages of review, not merely at the time the complaint is filed.” Preiser v. Newkirk, 422 U.S. 395,
`
`401 (1975). If a case “lo[ses] its character as a present live controversy,” it is moot. Allard v.
`
`DeLorean, 884 F.2d 464, 466 (9th Cir. 1989). To determine whether a claim for declaratory relief
`
`is moot, a court must analyze “whether the facts alleged, under all the circumstances, show that
`
`there is a substantial controversy, between parties having adverse legal interests, of sufficient
`
`immediacy and reality to warrant the issuance of a declaratory judgment.” Bayer v. Neiman
`
`Marcus Grp., Inc., 861 F.3d 853, 867 (9th Cir. 2017) (quoting MedImmune, Inc. v. Genentech,
`
`Inc., 549 U.S. 118, 127 (2007)). Applying this test, courts have found that declaratory relief
`
`claims are moot when their mirror image counterclaims are dismissed with prejudice. See
`
`Warshawer v. Tarnutzer, 2016 WL 3916988, at *5 (W.D. Wash. July 20, 2016).
`
`
`1 Defendants’ counterclaim for infringement of Patent No. 8,898,611 (“ ’611 Patent”), a patent
`which does not appear in QuickLogic’s declaratory relief claims, does have a connection with the
`intellectual property licensed under the 2010 Agreement. See Answer & Countercls. ¶¶ 494–510
`(Seventeenth Cause of Action). Namely, the ’611 Patent lists two patent applications licensed
`under the 2010 Agreement as “Related U.S. Application Data.” Id., Ex. P at 1, ECF No. 35-3;
`2010 Agreement at 8. To the extent that the later-filed counterclaims are even relevant to the
`Court’s subject-matter jurisdiction over the earlier-filed declaratory relief claims, the Court finds
`that this thin connection between the ’611 Patent and two licensed applications is insufficient to
`form a common nucleus of operative fact between QuickLogic’s non-breach of contract claim and
`any patent claim or counterclaim.
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`6
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 7 of 10
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`QuickLogic makes the same argument that the Warshawer court accepted. It asserts that
`
`its patent non-infringement claims are moot because the Court already dismissed the mirror image
`
`counterclaims with prejudice. QuickLogic Mot. at 5–6. In their opposition and cross-motion,
`
`Defendants do not address QuickLogic’s arguments for mootness. See generally Defs.’ Mot.
`
`Only in their reply in support of their cross-motion do Defendants touch upon mootness. But even
`
`then, they do not dispute that dismissal of their counterclaims with prejudice would moot
`
`QuickLogic’s declaratory relief claims; rather, they argue that the Court did not dismiss their
`
`counterclaims with prejudice at all because the Court dismissed some of those counterclaims using
`
`the words, “without leave to amend,” instead of the words, “with prejudice.” Defs.’ Reply in
`
`Support of Mot. to Dismiss at 8–9, ECF No. 80.
`
`Defendants misunderstand the Court’s Prior Order. Although Defendants are correct that
`
`the Court used different language when dismissing different claims, and sometimes, there may be
`
`a meaningful difference between “without leave to amend” and “with prejudice,” in the context of
`
`the Prior Order, it is clear that all counterclaims were dismissed with prejudice. The Court
`
`analyzed each of Defendants’ counterclaims on the merits of their allegations and dismissed them
`
`because they failed to state a claim. Prior Order at 10–16. When the Court found that amendment
`
`would be futile and denied leave to amend, it was not doing so on jurisdictional grounds and was
`
`not allowing Defendants to refile their counterclaims later. Id. The end result is that Defendants’
`
`counterclaims were dismissed with prejudice, whatever words the Court used to describe it.
`
`Consequently, the Court finds that QuickLogic’s patent non-infringement claims are moot,
`
`GRANTS QuickLogic’s motion as to those claims, and DENIES as moot Defendants’ motion as
`
`to those claims. The Court does not address the mootness of QuickLogic’s non-breach of contract
`
`claim because it already determined that it is without subject-matter jurisdiction as to that claim.
`
`C.
`
`Discovery
`
`Because QuickLogic’s patent non-infringement claims are moot and the Court lacks
`
`jurisdiction over QuickLogic’s non-breach of contract claim, the Court DENIES Defendants’
`
`request for discovery into those claims.
`
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`7
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 8 of 10
`
`
`
`D.
`
`Prevailing Party
`
`Federal Rule of Civil Procedure Rule 54(d)(1) provides that “costs—other than attorney’s
`
`fees—should be allowed to the prevailing party.” In a patent action, Federal Circuit law
`
`determines prevailing party status while regional circuit law governs the decision regarding an
`
`award of costs. Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 1407 (Fed. Cir.
`
`2004).
`
`The Federal Circuit requires a prevailing party to (1) have received “at least some relief on
`
`the merits,” and (2) for that relief to “materially alter the legal relationship between the parties by
`
`modifying one party's behavior in a way that ‘directly benefits’ the opposing party.” SSL Servs.,
`
`LLC v. Citrix Sys., Inc., 769 F.3d 1073, 1086 (Fed. Cir. 2014) (quoting Shum v. Intel Corp., 629
`
`F.3d 1360, 1367 (Fed. Cir. 2010)). However, a party need not prevail on all claims in order to
`
`qualify as a prevailing party. Shum, 629 F.3d at 1367–68. Dismissal of a party’s infringement suit
`
`with prejudice is “tantamount to a decision on the merits” and is sufficient to establish that the
`
`opposing party is prevailing. Raniere v. Microsoft Corp., 887 F.3d 1298, 1307 (Fed. Cir. 2018).
`
`Ninth Circuit law provides that, once a court determines a party is prevailing, Rule
`
`54(d)(1) creates “a presumption in favor of awarding costs to a prevailing party, but vests in the
`
`district court discretion to refuse to award costs.” Ass'n of Mex.-Am. Educators v. Cal., 231 F.3d
`
`572, 591 (9th Cir. 2000) (en banc).
`
`Under these tests, the Court finds that QuickLogic is the prevailing party and is entitled to
`
`costs. By securing the dismissal with prejudice of Defendants’ patent infringement counterclaims,
`
`QuickLogic won “some relief on the merits” and “alter[ed] the legal relationship between the
`
`parties,” because Defendants can no longer raise those patent infringement claims against
`
`QuickLogic. See SSL Servs., 769 F.3d at 1086. That is sufficient to establish QuickLogic as the
`
`prevailing party. See Raniere, 887 F.3d at 1307. The fact that the Court now dismisses
`
`QuickLogic’s non-breach of contract claim for lack of jurisdiction—and Defendants’ state law
`
`counterclaims might also be dismissed for lack of jurisdiction rather than with prejudice (see infra
`
`Section IV)—does not change this conclusion because QuickLogic was not required to prevail on
`
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 9 of 10
`
`
`
`all claims. Nor does the fact that the Court is mooting QuickLogic’s patent non-infringement
`
`claims change the analysis. So long as QuickLogic has won relief (as the Court just found that it
`
`has), it is prevailing even if its claims are mooted. See Dragon Intell. Prop., LLC v. Dish Network
`
`LLC, 956 F.3d 1358, 1361 (Fed. Cir. 2020) (finding defendants to be prevailing parties after the
`
`plaintiff’s infringement claims were mooted by inter partes review cancelling the asserted
`
`patents). As a result, the Court finds that QuickLogic is prevailing. And because Defendants have
`
`provided no reasons rebutting the presumption in favor of awarding costs, the Court awards costs
`
`to QuickLogic.
`
`IV. CONCLUSION
`
`For the reasons given above, the Court finds that it is without subject-matter jurisdiction to
`
`hear QuickLogic’s non-breach of contract claim. Therefore, the Court GRANTS Defendants’
`
`motion and DENIES QuickLogic’s motion as to that claim, and it dismisses the claim without
`
`prejudice to refiling in state court. The Court also finds that QuickLogic’s patent non-
`
`infringement claims are moot. Thus, it GRANTS QuickLogic’s motion and DENIES Defendants’
`
`motion as to those claims, and it dismisses those claims as moot. The Court also DENIES
`
`Defendants’ request for discovery into QuickLogic’s claims, finds QuickLogic to be the prevailing
`
`party, and awards costs to QuickLogic.
`
`Having now resolved QuickLogic’s declaratory relief claims, the Court notes that the
`
`jurisdictional issues surrounding QuickLogic’s non-breach of contract claim have raised doubts
`
`regarding the Court’s subject-matter jurisdiction over Defendants’ state law counterclaims. Even
`
`though no party has challenged the Court’s jurisdiction over those counterclaims, the Court has
`
`“an independent obligation to determine whether subject-matter jurisdiction exists, even in the
`
`absence of a challenge from any party.” Arbaugh v. Y&H Corp., 546 U.S. 500, 514 (2006). And
`
`because jurisdictional questions “may be resurrected at any point in the litigation,” Gonzalez, 565
`
`U.S. at 141, the Court hereby ORDERS the parties TO SHOW CAUSE why it should not vacate
`
`the dismissals with prejudice of Defendants’ state law counterclaims and instead dismiss those
`
`claims for lack of subject-matter jurisdiction. The parties shall file responses to the order to show
`
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:21-cv-04657-EJD Document 83 Filed 08/11/23 Page 10 of 10
`
`
`
`cause of no more than fifteen (15) pages by August 25, 2023.
`
`IT IS SO ORDERED.
`
`Dated: August 11, 2023
`
`
`
`
`
`
`EDWARD J. DAVILA
`United States District Judge
`
`
`
`
`Case No.: 5:21-cv-04657-EJD
`ORDER RE QUICKLOGIC MOT. FOR J. ON THE PLEADINGS & DEFS.’ MOT. TO
`DISMISS; ORDER TO SHOW CAUSE
`
`10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`