NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`CHRIMAR SYSTEMS, INC., DBA CMS
`TECHNOLOGIES, INC., CHRIMAR HOLDING
`COMPANY, LLC,
`Plaintiffs-Appellees
`
`v.
`
`ALE USA INC., FKA ALCATEL-LUCENT
`ENTERPRISE USA, INC.,
`Defendant-Appellant
`______________________
`
`2018-2420
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Texas in No. 6:15-cv-00163-JDL, Mag-
`istrate Judge John D. Love.
`______________________
`
`Decided: September 19, 2019
`______________________
`
`JUSTIN SCOTT COHEN, Thompson & Knight LLP, Dal-
`las, TX, argued for plaintiffs-appellees. Also represented
`by JAMES MICHAEL HEINLEN, RICHARD L. WYNNE, JR.
`
` LEISA TALBERT PESCHEL, Jackson Walker LLP, Hou-
`ston, TX, argued for defendant-appellant. Also represented
`by CHRISTOPHER NEEDHAM CRAVEY.
`
`

`

`2
`
`CHRIMAR SYSTEMS, INC. v. ALE USA INC.
`
` ______________________
`
`Before TARANTO, CLEVENGER, and HUGHES, Circuit
`Judges.
`
`TARANTO, Circuit Judge.
`Chrimar Systems, Inc., owns four related patents, U.S.
`Patent Nos. 8,155,012, 8,942,107, 8,902,760, and
`9,019,838, that address the identification and tracking of
`electronic equipment over an Ethernet network. In 2015,
`Chrimar sued ALE USA Inc., alleging infringement of
`those patents. After claim construction, ALE stipulated to
`infringement of the asserted claims of all four patents but
`pressed several defenses and counterclaims. A jury trial
`returned a verdict in favor of Chrimar, and the district
`court entered a judgment awarding Chrimar damages and
`post-verdict ongoing royalties.
`ALE appealed to this court. We affirmed on all issues
`presented to us except for the construction of a claim term
`in the ’012 patent, which we reversed, and we remanded
`for further proceedings. Chrimar Holding Co., LLC v. ALE
`USA Inc., 732 F. App’x 876 (Fed. Cir. 2018). We noted in
`our opinion (as amended on June 1, 2018) that the Patent
`Trial and Appeal Board of the Patent and Trademark Of-
`fice had recently issued final written decisions deeming un-
`patentable all the claims at issue in this case, but we did
`not address any issue that those decisions might raise. Id.
`at 881 n.2.
`On remand, both parties filed motions with the district
`court in July 2018. ALE sought certain relief based on the
`Board’s unpatentability decisions—which Chrimar was in
`the process of appealing to this court. As relevant here,
`ALE moved variously for a stay of the ongoing royalties, for
`a stay of the proceedings as a whole, and for relief from the
`judgment under Federal Rule of Civil Procedure 60(b)(5).
`Chrimar, for its part, moved to dismiss the count of its com-
`plaint that alleged infringement of the ’012 patent (which
`
`

`

`CHRIMAR SYSTEMS, INC. v. ALE USA INC.
`
`3
`
`Chrimar had narrowed to claim 31 and possibly also claims
`35, 43, and 60), and it provided ALE a covenant not to sue
`ALE on that patent. ALE opposed Chrimar’s motion on the
`ground that ALE had an unadjudicated, live counterclaim
`for noninfringement of the ’012 patent because the cove-
`nant did not extend to ALE’s customers and distributors.
`In August 2018, the district court ruled as follows on
`the motions presented. It dismissed Chrimar’s ’012-in-
`fringement count, and it ruled that ALE no longer had any
`counterclaim left, which, in any event, was mooted by the
`covenant not to sue and could not be considered in light of
`this court’s mandate. And the court concluded that, with
`the ’012 patent out of the case, there was nothing left in the
`case to stay, which, in any event, could not be done in light
`of this court’s mandate. The court’s amended final judg-
`ment included the continuing order to pay ongoing royal-
`ties, but only on the three remaining patents (having
`expiration dates in April 2019), not the ’012 patent (having
`an expiration date in March 2020). We were informed at
`oral argument that, pursuant to the parties’ agreement,
`ALE has not paid any money under the judgment—neither
`damages nor ongoing royalties nor any other amount.
`ALE timely appealed to this court. In May 2019, after
`briefing was complete, Chrimar moved to terminate the ap-
`peal. It attached to the motion (a) a formal disclaimer of
`claims 31, 35, 43, and 60 of the ’012 patent, dated May 12,
`2019, and filed in the PTO under 35 U.S.C. § 253, and (b) a
`new declaration from Chrimar’s president, dated May 14,
`2019, that now included ALE’s suppliers, customers, and
`distributors within the covenant not to sue for infringe-
`ment of the ’012 patent.
`Meanwhile, Chrimar’s appeals of the Board’s decisions
`proceeded. We heard those appeals the same day as we
`heard ALE’s appeal in this case. In a separate order issued
`today, we have affirmed the Board’s determination of un-
`patentability of all the claims of the ’012, ’107, ’838, and
`
`

`

`4
`
`CHRIMAR SYSTEMS, INC. v. ALE USA INC.
`
`’760 patents relevant to this case. Chrimar Systems, Inc.
`v. Juniper Networks, Inc., Nos. 2018-1499, 2018-1500,
`2018-1503, 2018-1984 (Fed. Cir. Sept. 19, 2019).
`Our affirmance of the Board’s decisions of unpatenta-
`bility of the patent claims at issue in the present case has
`“an immediate issue-preclusive effect on any pending or co-
`pending actions involving the patent[s].” XY, LLC v. Trans
`Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018). This is
`such a case under Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013), and related cases. It does
`not involve the special circumstance of a “fully satisfied
`and unappealable final judgment” like the one in Western-
`Geco L.L.C. v. ION Geophysical Corp., 913 F.3d 1067, 1072
`(Fed. Cir. 2019).
`A case is “pending,” XY, LLC, 890 F.3d at 1294, when
`it is not yet final in the sense that “the litigation [is] en-
`tirely concluded so that [the] cause of action [against the
`infringer] was merged into a final judgment . . . one that
`ends the litigation on the merits and leaves nothing for the
`court to do but execute the judgment,’’ Fresenius, 721 F.3d
`at 1341. Such finality generally does not exist when a di-
`rect appeal is still pending. Mendenhall v. Barber-Greene
`Co., 26 F.3d 1573, 1579–80 (Fed. Cir. 1994) (invalidity
`judgment may be raised “at any stage of the affected pro-
`ceedings”); id. at 1583–84; see WesternGeco, 913 F.3d at
`1070–72; Dow Chemical Co. v. Nova Chemicals Corp. (Can-
`ada), 803 F.3d 620, 628 (Fed. Cir. 2015); ePlus, Inc. v. Law-
`son Software, Inc., 789 F.3d 1349, 1358 (Fed. Cir. 2015);
`Fresenius, 721 F.3d at 1344, 1347.
`A case is generally to be considered as a whole in judg-
`ing its pendency. In John Simmons Co. v. Grier Bros. Co.,
`258 U.S. 82 (1922), the patent claims had been held invalid
`in a completed appeal and the case had been remanded
`only for proceedings on a separate, state-law claim. While
`the state-law proceedings were pending, the Supreme
`
`

`

`CHRIMAR SYSTEMS, INC. v. ALE USA INC.
`
`5
`
`Court held the patent claims valid in another case. The
`Court then ruled that this new holding had to be applied to
`the first case, reviving the patent claims. Id. at 88–91.
`Simmons involved applying a decision that upheld validity
`to revive a patent claim that had been adjudicated invalid
`in another, still-pending case. But its understanding of the
`finality principle applies as well in the more familiar situ-
`ation presented in this case and in the line of authorities
`cited above, where the issue is application of a holding of
`invalidity (unpatentability) to patent claims that had been
`upheld in another, still-pending case.
`This case is still pending. And we cannot say that its
`pendency rests on the assertion of only insubstantial argu-
`ments. We therefore have no occasion to address questions
`that might arise about application of the Fresenius/Sim-
`mons preclusion principle to a case that has been kept alive
`only on insubstantial grounds.
`ALE asked the district court to modify the ongoing roy-
`alty portion of the judgment, at least by staying the run-
`ning of the obligation. A district court has authority and
`discretion to modify continuing relief when circumstances
`change. See System Federation No. 91, Ry. Employees’
`Dept., AFL-CIO v. Wright, 364 U.S. 642, 646–67 (1961);
`ePlus, 789 F.3d at 1355 (“[A] continuing decree of injunc-
`tion directed to events to come is subject always to adapta-
`tion as events may shape the need.”) (quoting United States
`v. Swift & Co., 286 U.S. 106, 114–15 (1932)). We have not
`been shown any authority declaring that, if asked, a dis-
`trict court may not or should not at least consider staying
`ongoing royalties in light of new Board unpatentability de-
`cisions like the ones at issue here. ALE could reasonably
`request this relief.
`For similar reasons, ALE also could reasonably request
`a stay of the case in light of the Board’s decisions. As a
`general matter, a district court has a range of discretion
`
`

`

`6
`
`CHRIMAR SYSTEMS, INC. v. ALE USA INC.
`
`about whether to stay a case before it in light of other pro-
`ceedings that might simplify resolution of the case. See,
`e.g., Murata Machinery USA v. Daifuku Co., 830 F.3d 1357,
`1361 (Fed. Cir. 2016); Landis v. North American Co., 299
`U.S. 248, 254–55 (1936) (holding that a decision to stay pro-
`ceedings “calls for the exercise of judgment, which must
`weigh competing interests and maintain an even balance”).
`ALE does not contend that the Board’s decisions them-
`selves have preclusive effect before judicial review has oc-
`curred or the time for judicial review has run without a
`request for judicial review. But it does contend that, even
`before that time, the Board’s decisions should at least be
`considered in an equitable determination whether to stay
`the case—presumably along with other considerations,
`such as the stage of the case and ALE’s own choices about
`where to challenge the patent claims at issue. Without ad-
`dressing the ultimate merits of that contention, we con-
`clude that, at least under present case law, there is nothing
`insubstantial about ALE’s argument for a stay of the case.
`The district court denied the relief requested. It did
`not, for example, terminate the royalties and leave Chri-
`mar to recover damages for the period at issue through a
`follow-on lawsuit if the patent claims survived judicial re-
`view. ALE was reasonable in appealing the district court’s
`denial of relief. It had a substantial argument that the dis-
`trict court did not exercise available discretion because, in
`denying the requested stay, it did not recognize that it had
`discretion. In these circumstances, we do not decide
`whether ALE would have had a reasonable basis to appeal
`had the district court recognized its discretion and exer-
`cised it upon consideration of relevant circumstances and
`policies.
`In addition, ALE had a substantial argument to the
`district court that it still had a counterclaim for nonin-
`fringement of the ’012 patent even if Chrimar’s affirmative
`count asserting infringement of that patent was to be
`
`

`

`CHRIMAR SYSTEMS, INC. v. ALE USA INC.
`
`7
`
`dismissed. The procedural history presented to us provides
`a substantial basis for ALE’s contention that it had not
`dropped or forfeited its counterclaim, and the limited rec-
`ord presented to us provides a substantial basis for uncer-
`tainty about whether no case or controversy remained in
`light of the covenant not to sue that Chrimar gave to ALE
`in the district court. Without declaring ALE’s contention
`meritorious, we think that ALE could reasonably press
`those contentions both in the district court and on appeal.
`We note that only after the briefing was complete on appeal
`did Chrimar take additional steps—filing a statutory dis-
`claimer and a broader covenant not to sue—to strengthen
`its argument that there was no longer a case or controversy
`over infringement of the ’012 patent.
`Finally, in all of the foregoing respects, we see nothing
`insubstantial about ALE’s contention that our 2018 man-
`date did not foreclose the district court’s consideration of
`the arguments ALE made. The Board’s unpatentability de-
`cisions had not existed at the time of the rulings that were
`challenged on appeal, and we were not asked to rule on the
`effect of those intervening decisions. In these circum-
`stances, ALE had a substantial argument when the case
`returned to the district court that any effect of the Board’s
`decisions, in the respects ALE invoked them, was for the
`district court to decide, with consideration of the issue not
`foreclosed by our mandate. See Standard Oil Co. of Cal. v.
`United States, 429 U.S. 17, 18–19 (1976); Engel Industries,
`Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir.
`1999); Prism Technologies LLC v. Sprint Spectrum L.P.,
`757 F. App’x 980, 982–83 (Fed. Cir. 2019).
`We reiterate that we do not decide whether ALE is cor-
`rect on the merits of the just-discussed contentions. We
`decide only that this case remains pending and that its
`pending status is not the result of an abuse of the judicial
`process in the form of presentation of insubstantial argu-
`ments. As a result, the now-affirmed unpatentability
`
`

`

`8
`
`CHRIMAR SYSTEMS, INC. v. ALE USA INC.
`
`determinations by the Board as to all claims at issue must
`be given effect in this case. Accordingly, the motion to ter-
`minate the appeal is denied, the final judgment and award
`of costs are vacated, and the case is remanded to the dis-
`trict court for dismissal.
`Each party shall bear its own costs.
`VACATED & REMANDED FOR DISMISSAL
`
`