throbber
United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ANZA TECHNOLOGY, INC.,
`Plaintiff-Appellant
`
`v.
`
`MUSHKIN, INC., DBA ENHANCED NETWORK
`SYSTEMS, INC.,
`Defendant-Appellee
`______________________
`
`2019-1045
`______________________
`
`Appeal from the United States District Court for the
`District of Colorado in No. 1:17-cv-03135-MEH, Magistrate
`Judge Michael E. Hegarty.
`______________________
`
`Decided: August 16, 2019
`______________________
`
`COLBY BRIAN SPRINGER, Polsinelli LLP, San Francisco,
`CA, argued for plaintiff-appellant. Also represented by
`MIYA YUSA; MICHAEL DULIN, Denver, CO; HANNAH
`THERESA YANG, Kilpatrick Townsend & Stockton LLP, San
`Francisco, CA.
`
` D. SCOTT HEMINGWAY, Hemingway & Hansen, LLP,
`Dallas, TX, argued for defendant-appellee. Also repre-
`sented by THOMAS S. RICE, Senter Goldfarb & Rice LLC,
`Denver, CO.
` ______________________
`
`

`

`2
`
`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`
`Before PROST, Chief Judge, NEWMAN and BRYSON,
`Circuit Judges.
`
`
`BRYSON, Circuit Judge.
`
`Plaintiff Anza Technology, Inc., (“Anza”) appeals
`from a decision of the United States District Court for the
`District of Colorado granting a motion by defendant Mush-
`kin, Inc., dba Enhanced Network Systems, Inc., (“Mush-
`kin”) to dismiss Anza’s second amended complaint. The
`dismissal followed from the court’s finding that Anza’s
`claim of damages for patent infringement was barred by
`the six-year statute of limitations in the Patent Act, 35
`U.S.C. § 286. That ruling was based in turn on the court’s
`determination that the claims in Anza’s second amended
`complaint did not relate back to the date of Anza’s original
`complaint and were therefore time-barred. Because the
`district court’s application of the relation back doctrine was
`overly restrictive, we reverse in part, vacate in part, and
`remand for further proceedings.
`I
`A
`Anza filed this action on March 28, 2017, in the United
`States District Court for the Eastern District of California,
`alleging that Mushkin had infringed claims 1, 14, and 16
`of Anza’s U.S. Patent No. 7,124,927 (“the ’927 patent”), in
`violation of 35 U.S.C. § 271(a) and (g). The ’927 patent,
`entitled “Flip Chip Bonding Tool and Ball Placement Ca-
`pillary,” relates to “dissipative and insulative ceramic flip
`chip bonding tools and capillaries for ball placement for
`bonding electrical connections.” ’927 patent, col. 1, ll. 39–
`41.
`The specification of the ’927 patent discusses two tech-
`niques for bonding electronic components, such as semicon-
`ductor integrated circuit (“IC”) chips, to substrates, circuit
`
`

`

`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`3
`
`boards, or carriers. The two techniques are referred to as
`“wire bonding” and “flip chip bonding.” ’927 patent, col. 1,
`ll. 60–65. In wire bonding, the chip is oriented face-up, so
`that there is no direct electrical connection between the
`leads of the chip and the bond pads on the substrate. A
`wire is then used to connect the chip to the substrate. Id.
`at col. 1, ll. 43–61. In flip chip bonding, the chip is oriented
`face-down, which allows for a direct electrical connection
`between the chip and the substrate. The direct electrical
`connection is facilitated by conductive solder balls that are
`deposited on the chip; the solder balls provide the conduc-
`tive path from chip to substrate. Id. at col. 1, ll. 61–65; col.
`2, ll. 9–10; Fig. 3.
`
` Under either technique, the bonding process requires
`the use of bonding tools. The ’927 patent explains that the
`problem with prior art bonding tools was that “an electro-
`static discharge (ESD) from the bonding tool or transient
`currents from the machine [that uses the tool] can damage
`the very circuit the tool is bonding.” Id. at col. 2, ll. 47–49.
`According to the specification, “[c]ertain prior art devices
`have a one-or-more volt emission when the tip makes bond-
`ing contact. This could present a problem, as a one-volt
`static discharge can . . . cause the integrated circuit to fail.”
`Id. at col. 2, ll. 53–59.
`To avoid damage to the electronic devices from such an
`electrostatic discharge, the ’927 patent recites a bonding
`tool tip for flip chip bonding that “conducts electricity at a
`rate sufficient to prevent charge buildup but not at so high
`a rate as to overload the device being bonded.” Id. at col. 2,
`line 67, through col. 3, line 2.
`
`Claims 1, 14, and 16 of the ’927 patent, all independent
`claims, recite a system, a component, and a method, respec-
`tively. Claim 1 provides as follows:
`1. A flip chip bonding tool and ball placement capil-
`lary system for connecting leads on integrated
`
`

`

`4
`
`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`circuit bonding pads, comprising a dissipative ma-
`terial having a resistance low enough to prevent a
`discharge of a charge to a device being bonded and
`high enough to stop current flow large enough to
`damage the device being bonded.
`Claim 14 recites:
`14. An ESD-preventive device comprising:
`a flip chip bonding tool and ball placement capil-
`lary, comprising a dissipative material and config-
`ured to come in contact with a device being bonded,
`wherein a current produced by static charge gener-
`ated during bonding is allowed to flow; wherein the
`dissipative material has a resistance low enough to
`prevent a discharge of charge to the device being
`bonded and high enough to stop all current flow to
`the device being bonded.
`Claim 16 recites “[a] method of utilizing a flip chip bonding
`tool . . . in a microelectronic assembly.” The claimed
`method recites the use of a bonding machine capable of be-
`ing equipped with a flip chip bonding tool, which has a tip
`comprising a dissipative material having the same proper-
`ties as recited in claims 1 and 14.
`B
`On September 6, 2017, Anza filed its first amended
`complaint, which joined Avant Technology, Inc., as a co-de-
`fendant.1 Thereafter, Mushkin filed a motion to dismiss or
`
`1 The first amended complaint alleged that Avant was
`“the sole aggregator of all Mushkin-based memory modules
`and board products . . . by virtue of Avant having acquired
`certain assets of Defendant Mushkin in accordance with an
`asset purchase agreement dated April 1, 2012.” Because
`there is no material difference between the original com-
`plaint and the first amended complaint for purposes of the
`
`

`

`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`5
`
`to sever the claims against Mushkin from those against
`Avant, and either to stay the case against Mushkin or to
`transfer the case to the District of Colorado. The California
`district court severed Anza’s claims against Mushkin and
`transferred the case against Mushkin to the District of Col-
`orado.
`Following the transfer, Anza served infringement con-
`tentions against Mushkin pursuant to the District of Colo-
`rado’s Local Patent Rules 4 and 5. The infringement
`contentions accused Mushkin of directly infringing claims
`1 and 14, but did not refer to claim 16. Noting in its in-
`fringement contentions that discovery had not commenced
`and a formal scheduling order had not been entered, Anza
`stated that it reserved “the right to supplement these con-
`tentions as appropriate based upon further discovery and
`the schedule of this case, including but not limited to as-
`sertions related to new claims and/or patents as may be al-
`lowed through amendment of the operative pleading.”
`The parties then engaged in mediation. In the course
`of the mediation, Mushkin provided Anza with a declara-
`tion of George Stathakis, Mushkin’s president, regarding
`the technology used by Mushkin. The Stathakis declara-
`tion stated, inter alia, that Mushkin “did not bond IC chips
`to boards or modules.” Instead, according to the declara-
`tion, “[t]he memory products purchased by Mushkin, Inc.
`from suppliers were IC memory chips that were al-
`ready . . . bonded on printed circuit boards or memory mod-
`ule boards.” Additionally, the declaration stated that
`Mushkin’s supplier “does not place or position solder ball
`connectors on the IC chip for use in bonding the IC chip to
`a printed circuit board or memory module board.”
`
`
`issues in this case, we focus on the differences between the
`original complaint and the second amended complaint.
`
`

`

`6
`
`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`The district court held a hearing to address Mushkin’s
`motion to dismiss. In light of information in the Stathakis
`declaration, Anza “agreed that its present claims [were] no
`longer viable.” Based on that concession, the district court
`granted Mushkin’s motion. However, the court ruled that
`Anza would be permitted to file an amended complaint and
`that Mushkin would be allowed to file a motion to dismiss
`that complaint.
`
`C
`Anza filed its second amended complaint on June 8,
`2018. In the second amended complaint, Anza removed the
`infringement allegations regarding the ’927 patent and al-
`leged infringement of two new patents: U.S. Patent Nos.
`6,354,479 (“the ’479 patent”) and 6,651,864 (“the ’864 pa-
`tent”). The new complaint alleged that Mushkin had in-
`fringed those patents under 35 U.S.C. § 271(g). Anza also
`omitted ten of the sixteen products that had been accused
`in the original complaint and added two new products that
`had not previously been accused.
`The ’479 and ’864 patents, entitled “Dissipative Ce-
`ramic Bonding Tip” and “Dissipative Ceramic Bonding Tool
`Tip,” respectively, claim priority to the same U.S. provi-
`sional application as the ’927 patent. Like the ’927 patent,
`the ’479 and ’864 patents recite the use of “dissipative ce-
`ramic bonding tips for bonding electrical connections.” ’479
`patent, col. 1, ll. 12–13; ’864 patent, col. 1, ll. 20–21. The
`patents offer the same solution to the problem of electro-
`static discharge damage during the bonding process—
`providing a bonding tool tip that conducts electricity “at a
`rate sufficient to prevent charge buildup, but not at so high
`a rate as to overload the device being bonded.” ’479 patent,
`col. 2, ll. 4–6; ’864 patent, col. 2, ll. 11–13. The ’479 and
`’864 patents differ from the ’927 patent in that they are di-
`rected to bonding tool tips for wire bonding, rather than for
`flip chip bonding. In addition, in contrast to the system
`
`

`

`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`7
`
`and component claims of the ’927 patent, the asserted
`claims of the ’479 and ’864 patents (claims 39 and 28, re-
`spectively), are method claims. Claim 37 of the ’479 patent,
`from which asserted claim 39 depends, recites as follows:
`37. A method of using a bonding tip, comprising:
`bonding a device using a bonding tip made with a
`dissipative material that has a resistance low
`enough to prevent a discharge of charge to said de-
`vice and high enough to avoid current flow large
`enough to damage said device.
`Similarly, independent claim 28 of the ’864 patent recites:
`28. A method of using an electrically dissipative
`bonding tool tip, having a resistance in the range of
`105 to 1012 ohms, comprising:
`providing the electrically dissipative bonding tool
`tip;
`bonding a material to a device;
`allowing an essentially smooth current to dissipate
`to the device, the current being low enough so as
`not to damage said device being bonded and high
`enough to avoid a build up of charge that could dis-
`charge to the device being bonded and damage the
`device being bonded.
`
`D
`Mushkin filed a motion to dismiss the second amended
`complaint. It argued, inter alia, that the new patent claims
`against Mushkin do not relate back to the date of Anza’s
`original complaint. In support of that argument, Mushkin
`relied on Rule 15(c)(1)(B) of the Federal Rules of Civil Pro-
`cedure, which provides: “An amendment to a pleading re-
`lates back to the date of the original pleading when . . . the
`amendment asserts a claim or defense that arose out of the
`
`

`

`8
`
`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`conduct, transaction, or occurrence set out—or attempted
`to be set out—in the original pleading.”
`
`The district court granted Mushkin’s motion, ruling
`that the new infringement claims did not relate back to the
`date of the original complaint. The court explained that
`new infringement claims relate back to the date of the orig-
`inal complaint when the claims involve the same parties,
`the same products, and similar technology—i.e., when the
`claims are “part and parcel” of the original complaint. The
`court ruled that newly asserted claims of infringement do
`not relate back if the new claims are not an integral part of
`the claims in the original complaint and if proof of the new
`claims will not entail the same evidence as proof of the orig-
`inal claims.
` With respect to the patent claims asserted in the origi-
`nal complaint as compared with those asserted in the sec-
`ond amended complaint, the district court found that
`“[a]lthough the claims involve the same parties, they do not
`relate to identical products and technology.” Comparing
`the ’864 and ’479 patents with the ’927 patent, the district
`court found that the asserted claims of the ’864 and ’479
`patents “protect a method of using a wire bonding tool,
`while the ’927 claims involved a flip chip bonding and sol-
`der ball placement tool.” The district court acknowledged
`that the patent claims have the “same purpose—bonding
`integrated circuit chips to printed circuit boards while min-
`imizing electrostatic discharge.” But because it found that
`“different processes and technologies are used to achieve
`this purpose,” the district court held that the patent claims
`are “not part and parcel of one another.” As for the accused
`products, the court noted that the second amended com-
`plaint added two new accused products and omitted a
`
`

`

`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`9
`
`number of accused products as compared with the original
`complaint.2
`The district court added that “proving infringement of
`the initial and new claims would not involve substantially
`the same evidence.” The district court explained:
`Proving the ’927 patent claims would require evi-
`dence of the flip chip bonding method and how the
`flip chip bonding and ball placement tool was used
`in making the allegedly infringing products. Con-
`versely, proving the newly asserted claims requires
`evidence of the wire bonding process and how a
`wire bonding tool tip was used to produce the alleg-
`edly infringing products.
`In particular, the court noted, the new claims would entail
`different evidence because Anza’s infringement conten-
`tions had dropped claim 16 of the ’927 patent, which the
`district court considered to be the claim from the first
`amended complaint that was most similar to the newly as-
`serted claims.
`
`The district court then addressed the effect of its rul-
`ings on the statute of limitations for patent claims, 35
`U.S.C. § 286, which bars recovery for any infringement
`“committed more than six years prior to the filing of the
`complaint or counterclaim for infringement in the action.”
`
`2 The district court misspoke with regard to the num-
`ber of accused products omitted from the second amended
`complaint. The court stated that the second amended com-
`plaint omitted eleven of the products that were accused in
`the original complaint, but in fact the number of omitted
`products was ten. Compare Second Amended Complaint at
`13, Anza Tech., Inc. v. Mushkin, Inc., No. 1:17-cv-03135-
`MEH (D. Colo. June 8, 2018), ECF No. 75, with Complaint
`at 6–7, Anza Tech., Inc. v. Mushkin, Inc., No. 1:17-cv-
`03135-MEH (D. Colo. Mar. 28, 2017), ECF No. 1.
`
`

`

`10
`
`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`Because Anza acknowledged that Mushkin’s allegedly in-
`fringing activity all took place more than six years before
`the filing date of the second amended complaint, the court
`held that the effect of ruling that the second amended com-
`plaint did not relate back to the filing date for the original
`complaint was that all the asserted claims in the second
`amended complaint were time-barred.
`II
`A
`A preliminary question is whether Federal Circuit law,
`rather than regional circuit law, governs whether newly al-
`leged claims in an amended complaint relate back to the
`date of the original complaint when the new claims are
`based on newly asserted patents.
`We have previously held that “[a] procedural issue that
`is not itself a substantive patent law issue is nonetheless
`governed by Federal Circuit law if the issue pertains to pa-
`tent law, if it bears an essential relationship to matters
`committed to our exclusive control by statute, or if it clearly
`implicates the jurisprudential responsibilities of this court
`in a field within its exclusive jurisdiction.” O2 Micro Int’l
`Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364
`(Fed. Cir. 2006) (quoting Midwest Indus., Inc. v. Karavan
`Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999)(en banc
`in relevant part)).
`One example of such a procedural issue is a motion to
`sever in a patent case. We have held that “motions to sever
`are governed by Federal Circuit law because joinder in pa-
`tent cases is based on an analysis of the accused acts of in-
`fringement, and this issue involves substantive issues
`unique to patent law.” In re EMC Corp., 677 F.3d 1351,
`1354 (Fed. Cir. 2012). As in the case of motions to sever,
`the determination of whether newly alleged infringement
`claims relate back to the original complaint also turns on
`
`

`

`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`11
`
`“an analysis of the accused acts of infringement.” Id.
`Therefore, we hold that this determination is also governed
`by Federal Circuit law.
`
`B
`The next question is what standard governs this court’s
`review of a district court’s application of the relation back
`doctrine.
`Anza argues that this court should apply a de novo
`standard of review. Anza bases that argument on the fact
`that the district court dismissed the second amended com-
`plaint after holding the relation back doctrine inapplicable,
`and that dismissals of a complaint under Fed. R. Civ. P.
`12(b)(6) are subject to de novo review.
`The problem with Anza’s argument is that the dismis-
`sal in this case was the necessary consequence of the
`court’s determination that the relation back doctrine does
`not apply, since without the benefit of the relation back
`doctrine, it is clear that the statute of limitations would bar
`all of Anza’s claims against Mushkin. What Anza is chal-
`lenging is not the dismissal itself, but whether the district
`court properly applied the relation back doctrine under
`Rule 15(c). The standard of review that applies to a dis-
`missal under Rule 12(b)(6) therefore has nothing to do with
`the critical issue in this case, which is whether the court
`properly determined not to apply the relation back doctrine
`to the second amended complaint. For that reason, Anza’s
`argument sheds no light on what standard should be ap-
`plied in reviewing that issue.
`Mushkin argues that the district court’s ruling on the
`relation back issue should be reviewed under the abuse of
`discretion standard. In arguing for that standard, Mush-
`kin relies on two decisions of this court, but the cases
`Mushkin cites do not support its argument. In the first
`case, Fromson v. Citiplate, Inc., the court merely stated
`that it found “no reversible error” in the district court’s
`
`

`

`12
`
`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`conclusion that the amended complaint related back to the
`date of the original complaint. 886 F.2d 1300, 1304 (Fed.
`Cir. 1989). The court did not specify what standard of re-
`view it applied in reaching that conclusion. The second
`case, Datascope Corp. v. SMEC, Inc., 962 F.2d 1043 (Fed.
`Cir. 1992), did not deal with the relation back doctrine at
`all. The court in that case merely held that the district
`court’s refusal to permit amendment of the complaint was
`not an abuse of discretion. Id. at 1047. While Datascope
`applied the abuse of discretion standard to the question
`whether the district court erred in denying a motion to
`amend a complaint under Fed. R. Civ. P. 15(a), nothing in
`Datascope speaks to the standard of review to be applied to
`the separate question of whether an amended pleading re-
`lates back to the date of the original pleading under Fed.
`R. Civ. P. 15(c).
`Mushkin’s suggestion that we review the district
`court’s relation back ruling under an abuse of discretion
`standard would be contrary to the law of most of the other
`circuits, which have adopted a de novo standard when re-
`viewing decisions regarding whether an amended pleading
`relates back to the date of the original pleading. See Glover
`v. FDIC, 698 F.3d 139, 144 (3d Cir. 2012); Robinson v.
`Clipse, 602 F.3d 605, 607 (4th Cir. 2010); Slayton v. Am.
`Express Co., 460 F.3d 215, 227–28 (2d Cir. 2006); Young v.
`Lepone, 305 F.3d 1, 14 (1st Cir. 2002); Miller v. Am. Heavy
`Lift Shipping, 231 F.3d 242, 246–47 (6th Cir. 2000); Del-
`gado-Brunet v. Clark, 93 F.3d 339, 342 (7th Cir. 1996);
`Slade v. U.S. Postal Serv., 875 F.2d 814, 815 (10th Cir.
`1989); Percy v. S.F. Gen. Hosp., 841 F.2d 975, 978 (9th Cir.
`1988). Contra Powers v. Graff, 148 F.3d 1223, 1226 (11th
`Cir. 1998) (application of Rule 15(c) is reviewed for abuse
`of discretion, while findings of fact necessary for applica-
`tion of the rule are reviewed for clear error ).
` We adopt the majority rule. The rationale underlying
`that rule, when it has been expressed, is that the de novo
`
`

`

`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`13
`
`standard of review applies because determining whether
`the amended claim “arose out of the conduct, transaction,
`or occurrence” set forth in the original complaint requires
`the reviewing court to apply the legal standard of Rule
`15(c) “to a given set of facts,” which is “a task we are no less
`suited to perform than the district court.” Miller, 231 F.3d
`at 247; accord Percy, 841 F.2d at 978; Lundy v. Adamar of
`N.J., Inc., 34 F.3d 1173, 1177 (3d Cir. 1994). In some in-
`stances, however, factual issues may need to be addressed
`as part of the district court’s analysis of the relation back
`issue. With respect to any disputed facts that are material
`to the relation back issue, we are not as well situated as
`the district court to make the appropriate findings. There-
`fore, in the event that such factual issues arise, we would
`review any findings by the district court on those issues for
`clear error, as we do in analogous circumstances. See, e.g.,
`Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875
`F.3d 1369, 1375 (Fed. Cir. 2017) (indefiniteness); Par
`Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194 (Fed.
`Cir. 2014) (obviousness); Alcon Research Ltd. v. Barr Labs.,
`Inc., 745 F.3d 1180, 1188 (Fed. Cir. 2014) (enablement);
`SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372,
`1377 (Fed. Cir. 2007) (presence of a case or controversy);
`Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1087–
`88 (Fed. Cir. 2003) (attorney fee award); In re Emert, 124
`F.3d 1458, 1460 (Fed. Cir. 1997) (double patenting).
`C
`The Supreme Court has interpreted the relation back
`
`doctrine liberally, to apply if an amended pleading “re-
`late[s] to the same general conduct, transaction and occur-
`rence” as the original pleading. Tiller v. Atl. Coast Line
`R.R. Co., 323 U.S. 574, 580–81 (1945) (holding, in a rail-
`road negligence case that even though the amended com-
`plaint alleged a different theory of negligence, the new
`charge related back to the original complaint because “[t]he
`cause of action now, as it was in the beginning, is the
`
`

`

`14
`
`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`same—it is a suit to recover damages for the alleged wrong-
`ful death of the deceased.”). That liberal interpretation of
`the relation back rule reflects the rationale of Rule 15(c),
`which is that “a party who has been notified of litigation
`concerning a particular occurrence has been give all the no-
`tice that statutes of limitations were intended to provide.”
`Baldwin Cty. Welcome Ctr. v. Brown, 466 U.S. 147, 149 n.3
`(1984).
` Our predecessor court, the Court of Claims, embraced
`that liberal, notice-based interpretation of Rule 15(c). See
`Snoqualmie Tribe of Indians v. United States, 372 F.2d
`951, 961 (Ct. Cl. 1967) (“A restrictive view would limit ap-
`plication of the rule to minor pleading mistakes. We think
`modern practice requires a more imaginative approach,
`and that [Rule 15(c)] should be read liberally to permit an
`amended pleading to relate back where there is sufficient
`notice.”); see also Vann v. United States, 420 F.2d 968, 974
`(Ct. Cl. 1970) (“The test for determining whether the new
`matter in an amended petition arose from the ‘conduct,
`transaction, or occurrence’ first pleaded is whether the gen-
`eral fact situation or the aggregate of the operative facts
`underlying the claim for relief in the first petition gave no-
`tice to the [accused party] of the new matter.”); United
`States v. N. Paiute Nation, 393 F.2d 786, 790 (Ct. Cl. 1968)
`(“Sufficient notice to the Government is the test . . . with
`our inquiry focusing on the notice given by the general fact
`situation set forth in the original pleading.”) (citations and
`footnote omitted)).
`Federal Circuit cases have applied a similar approach
`to Rule 15(c). See Korody-Colyer Corp. v. Gen. Motors
`Corp., 828 F.2d 1572, 1575 (Fed. Cir. 1987) (“Under Rule
`15(c) . . . an amendment may relate back when the earlier
`complaint gave adequate notice of the new claim.”); see also
`Barron Bancshares, Inc. v. United States, 366 F.3d 1360,
`1369–70 (Fed. Cir. 2004); Intrepid v. Pollock, 907 F.2d
`1125, 1130 (Fed. Cir. 1990).
`
`

`

`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`15
`
`The notice-based interpretation of Rule 15(c) is con-
`sistent with the approach used under Rules 13(a) and 20(a)
`of the Federal Rules of Civil Procedure. Those rules, which
`share the “same transaction or occurrence” standard used
`in Rule 15(c), have been interpreted to require that coun-
`terclaims (in the case of Rule 13(a)) or the claims of the
`plaintiffs to be joined (in the case of Rule 20(a)) be logically
`related to the claims in the original complaint. See In re
`EMC Corp., 677 F.3d at 1357–58.
`The “logical relationship” standard contemplates a “lib-
`eral approach to the concept of same transaction or occur-
`rence.” 7 Charles Alan Wright et al., Federal Practice &
`Procedure § 1653, at 410–11 (3d ed. 2001). It asks whether
`the facts underlying the alleged claims “share an aggregate
`of operative facts.” In re EMC Corp., 677 F.3d at 1359. For
`purposes of the logical relationship test, “all logically re-
`lated events entitling a person to institute a legal action
`against another generally are regarded as comprising a
`transaction or occurrence.” 7 Charles Alan Wright et al.,
`Federal Practice & Procedure § 1653, at 409.
`In light of the similarity in the language used in Rule
`15(c) and Rules 13(a) and 20(a), cases applying the logical
`relationship test in the patent context are particularly in-
`structive in applying the relation back doctrine. Those
`cases suggest that pertinent considerations bearing on
`whether claims are logically related include the overlap of
`parties, products or processes, time periods, licensing and
`technology agreements, and product or process develop-
`ment and manufacture. See In re EMC Corp., 677 F.3d at
`1359–60; Futurewei Techs., Inc. v. Acacia Research Corp.,
`737 F.3d 704, 710 (Fed. Cir. 2013) (“Here, the logical rela-
`tionship is strong: the license agreement gives rise to
`Huawei’s alter-ego claim, to SmartPhone’s affirmative
`right to enforce the patents in the Texas case, and to
`Huawei’s defense in that case . . . .”); see also In re Rearden
`LLC, 841 F.3d 1327, 1332 (Fed. Cir. 2016) (noting that the
`
`

`

`16
`
`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`logical relationship test is one of three tests used to deter-
`mine whether the transaction-or-occurrence test is met un-
`der Rule 13(a), and finding the counterclaim compulsory
`because, inter alia, “the claims and counterclaims share a
`close, logical relation: the ownership and rightful use of the
`technology claimed and disclosed in the MOVA patents”).
`Several district courts have addressed the issue of
`whether newly alleged claims, based on separate patents,
`relate back to the date of the original complaint. Most of
`those courts have employed a similar analysis, asking
`whether the newly asserted patents are “part and parcel”
`of the original controversy. For example, in Halo Electron-
`ics, Inc. v. Bel Fuse Inc., No. C-07-06222 RMW, 2008 WL
`1991094, at *3 (N.D. Cal. May 5, 2008), the court found that
`the six Halo patents that were the subjects of the new
`claims were not “part or parcel” of the original complaint,
`which involved another patent, because “the Halo patents
`involve[d] different technologies and products.” On the
`other hand, the court in PerfectVision Manufacturing, Inc.
`v. PPC Broadband, Inc., 951 F. Supp. 2d 1083, 1093, 1093–
`94 (E.D. Ark. 2013), found that the amended complaint re-
`lated back to the date of the original complaint, after con-
`sidering whether the patents cited in the two complaints
`involved “the same field of art, the same fundamental sci-
`ence and technology . . . [,] the same allegedly infringing
`devices, and, in any damages analysis, the same pricing,
`sales, and related market data.”
`Accordingly, in determining whether newly alleged
`claims, based on separate patents, relate back to the date
`of the original complaint, we will consider the overlap of
`parties, the overlap in the accused products, the underlying
`science and technology, time periods, and any additional
`factors that might suggest a commonality or lack of com-
`monality between the two sets of claims. At bottom, how-
`ever, the question remains whether the general factual
`situation or the aggregate of operative facts underlying the
`
`

`

`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`17
`
`original claim for relief gave notice to Mushkin of the na-
`ture of the allegations it was being called upon to answer.
`D
` On appeal, Anza challenges the district court’s conclu-
`sion that the second amended complaint did not relate back
`to the date of the original complaint. Anza argues that the
`’864, ’479, and ’927 patents all seek to solve the same prob-
`lem—avoiding damage to delicate devices as a result of
`ESD—and that the three patents all employ the same so-
`lution to address that problem—using dissipative ceramic
`tips on the bonding tools.
`Anza also argues that there is a significant overlap of
`properties between the two sets of accused Mushkin prod-
`ucts. According to Anza, each accused product in both the
`original complaint and the second amended complaint re-
`quires the use of certain techniques and methods to guard
`against damaging ESD events, which include compliance
`with standards that “involve[] the use of manufacturing
`tools made of dissipative materials having resistance
`ranges low enough to prevent a discharge of a charge to an
`ESD sensitive device but high enough to avoid current
`flows that may damage the device.”
`Mushkin disagrees. According to Mushkin, the allega-
`tions in the second amended complaint are significantly
`different from the initial “flip chip” infringement allega-
`tions, for several reasons.
` Mushkin first argues that the fact that the second
`amended complaint withdrew all prior claims of infringe-
`ment under the “flip chip” ’927 patent and substituted
`claims from the two “wire bonding” patents indicates that
`the two complaints address entirely different bonding tech-
`niques. We disagree.
`While the patents address different bonding tech-
`niques, they all share the same underlying technology. All
`
`

`

`18
`
`ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.
`
`three patents are focused on solving the same problem by
`the same solution, using a bonding tool tip made of a dissi-
`pative material having a resistance low enough to prevent
`the discharge of a charge to a device being bonded and high
`enough to avoid current flow to that device. ’927 patent,
`col. 2, line 64, through col. 3, line 2; ’479 patent, col. 2, ll.
`3–6; ’864 patent, col. 2, ll. 11–13. Moreover, while the spec-
`ifications of the ’479 and ’864 patents discuss only wire
`bonding, the asserted claims of those patents are no

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