Case: 24-116 Document: 16 Page: 1 Filed: 03/18/2024
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`NOTE: This order is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
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`In Re VLSI TECHNOLOGY LLC,
`Petitioner
`______________________
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`2024-116
`______________________
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`On Petition for Writ of Mandamus to the United States
`District Court for the Northern District of California in No.
`5:17-cv-05671-BLF, Judge Beth Labson Freeman.
`______________________
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`ON PETITION
`______________________
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`Before MOORE, Chief Judge, TARANTO and CHEN, Circuit
`Judges.
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`MOORE, Chief Judge.
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`O R D E R
`VLSI Technology LLC petitions this court for a writ of
`mandamus seeking to reverse an order allowing Intel Cor-
`poration to amend its answer. Intel opposes. VLSI replies.
`For the following reasons, we deny the petition.
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`VLSI has asserted a number of patents against Intel in
`several forums. Two United States district court actions
`are currently pending, one in the Western District of Texas,
`which was previously on appeal before this court, VLSI
`Tech. LLC v. Intel Corp., 87 F.4th 1332 (Fed. Cir. 2023),
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`Case: 24-116 Document: 16 Page: 2 Filed: 03/18/2024
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`IN RE VLSI TECHNOLOGY LLC
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`and the present case filed by VLSI against Intel in the
`Northern District of California, alleging, as relevant here,
`that Intel infringed U.S. Patent Nos. 8,566,836 (the ’836
`patent); 8,004,922 (the ’922 patent); 7,675,806 (the ’806 pa-
`tent); and 8,268,672 (the ’672 patent).
`Intel’s amended answer here raised an affirmative de-
`fense that, under a prior agreement with a third party, In-
`tel was licensed to practice the patents. After discovery
`closed, Intel moved for summary judgment of no infringe-
`ment and the parties filed cross-motions for summary judg-
`ment on the license defense. In December 2023, the district
`court granted summary judgment in Intel’s favor on the
`’836 and ’922 patents; denied summary judgment of non-
`infringement on the ’806 and ’672 patents; and denied the
`cross-motions over the licensing defense.
`Shortly thereafter, VLSI granted Intel a covenant not
`to sue on the ’806 and ’672 patents. Concluding that VLSI’s
`unconditional promise not to sue for infringement of those
`patents deprived it of jurisdiction over Intel’s license de-
`fense, the district court denied Intel’s request to proceed to
`trial on that issue. Two days later, on January 26, 2024,
`Intel moved to amend its answer to assert a counterclaim
`for a declaratory judgment that Intel is licensed to VLSI’s
`entire patent portfolio. On February 9, 2024, the district
`court granted that motion, concluding that amendment
`was permissible under Rules 15 and 16 of the Federal
`Rules of Civil Procedure. VLSI then filed this petition.1
`We have jurisdiction. 28 U.S.C. §§ 1295(a)(1) and 1651.
`“Mandamus may be employed in exceptional circum-
`stances to correct a clear abuse of discretion or usurpation
`of judicial power by a trial court.” In re Calmar, Inc., 854
`F.2d 461, 464 (Fed. Cir. 1988) (citing, among others,
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`1 After this petition was filed, the district court va-
`cated its previously-scheduled trial date.
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`Case: 24-116 Document: 16 Page: 3 Filed: 03/18/2024
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`IN RE VLSI TECHNOLOGY LLC
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`Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S.
`271, 289 (1988)). Due to the exceptional nature of this re-
`lief, a petitioner must generally show that: (1) it has a clear
`and indisputable right to relief; (2) it does not have any
`other adequate method of obtaining relief; and (3) the “writ
`is appropriate under the circumstances.” Cheney v. U.S.
`Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004) (citation
`omitted). VLSI fails to make that showing here.
`VLSI primarily contends that the district court cannot
`hold a trial over Intel’s license counterclaim after having
`found it lacked jurisdiction over Intel’s prior related affirm-
`ative defense. Alternatively, VLSI argues that the district
`court should decline jurisdiction to allow these issues to be
`resolved in other proceedings. But VLSI has available
`means of obtaining relief on those issues without our im-
`mediate intervention. The district court’s order allowing
`Intel to amend its answer expressly contemplated explor-
`ing these issues in subsequent briefing, and VLSI has now
`raised these challenges in its February 23, 2024 motion to
`dismiss, Docket No. 868. If unsuccessful in those efforts
`before the district court, VLSI can also meaningfully raise
`these challenges on appeal after final judgment.2
`VLSI has also not shown the district court abused its
`discretion in finding good cause for Intel to amend its an-
`swer to add a counterclaim. Applying the governing legal
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`2 Attempting to sidestep this requirement, VLSI in-
`vokes cases that have recognized mandamus “may be used
`in narrow circumstances where doing so is important to
`‘proper judicial administration.’” In re Micron Tech., Inc.,
`875 F.3d 1091, 1095 (Fed. Cir. 2017) (quoting La Buy v.
`Howes Leather Co., 352 U.S. 249, 259–60 (1957)). But VLSI
`has identified no “basic, unsettled, recurring legal issues
`over which there is considerable litigation producing dis-
`parate results” that we previously have found sufficient for
`this exception to apply. Micron, 875 F.3d at 1095.
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`IN RE VLSI TECHNOLOGY LLC
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`standards, the district court made a case-specific determi-
`nation of good cause having found that Intel acted dili-
`gently in moving to amend its answer after the order
`finding the affirmative defense moot, that the prejudice to
`VLSI was minimal since VLSI had long been on notice of
`the issue, and that it would not be futile to allow Intel to
`amend to include the counterclaims, particularly in light of
`this court’s decision reversing the Texas district court on
`the same issue. VLSI, 87 F.4th at 1349–52.
`We need not address whether the court has subject
`matter jurisdiction over the counterclaim at this stage.
`The district court has a pending motion before it that will
`address jurisdiction in the first instance. We only note that
`Intel’s motion to amend its answer was filed after the court
`determined there were no remaining claims, such that no
`case or controversy remained before the court.
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`Accordingly,
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`IT IS ORDERED THAT:
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`The petition is denied.
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`March 18, 2024
` Date
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`FOR THE COURT
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