                           NOTE: This order is nonprecedential.

 United States Court of Appeals for the Federal Circuit
                          MISCELLANEOUS DOCKET NO. 858

                            IN RE AD-II ENGINEERING, INC.,

                                                   Petitioner.

                       ON PETITION FOR WRIT OF MANDAMUS

Before RADER, BRYSON, and LINN, Circuit Judges.

LINN, Circuit Judge.
                                         ORDER

       AD-II Engineering, Inc. petitions for a writ of mandamus to direct the United

States District Court for the Northern District of Illinois to (1) vacate or reverse its August

2 and August 3, 2007 orders denying AD-II’s motion for summary judgment and (2)

vacate its August 2 and August 3, 2007 orders rejecting AD-II’s objection to SRAM

Corporation’s assertion of infringement of claim 27 of SRAM’s patent.

       SRAM sued AD-II for infringement, and AD-II sought a declaratory judgment that

the patent was invalid, unenforceable, and not infringed. The district court determined,

inter alia, that the patent was not invalid, and AD-II appealed. This court vacated and

remanded for further proceedings concerning invalidity.             SRAM Corp. v. AD-II

Engineering, Inc., 465 F.3d 1351 (Fed. Cir. 2006) (SRAM II). On remand, SRAM filed a

notice of amendment indicating that it wished to assert infringement of claim 27 of the

patent in addition to previously asserted claim 16. While that request was pending

before the district court, AD-II petitioned this court for a writ of mandamus directing the

district court to enter judgment that claim 16 is invalid and to vacate its order requiring

briefing concerning whether SRAM could assert infringement of claim 27. AD-II argued
that this court’s mandate in SRAM II did not permit the district court to allow SRAM to

assert new claims in the proceedings on remand. We denied that mandamus petition

because, inter alia, the district court had not decided whether to allow SRAM to assert

infringement of claim 27. In re AD-II Eng., Inc., Misc. No. 852 (Fed. Cir. May 29, 2007).

On August 2, the district court held a hearing on the issue and issued an order

“reject[ing] AD-II’s objection to SRAM’s ability to raise claim 27 at this stage in the

proceeding.” At the August 2 hearing, the district court stated “I didn’t find anything

in . . . prior orders of the Court or in the mandate, certainly the mandate of the Federal

Circuit, that would preclude bringing Claim 27 into the case at this point . . . if it is a

matter of discretion at this point to entertain it, I am going to exercise that discretion and

entertain the claim based on Claim 27.”

       The remedy of mandamus is available only in extraordinary situations to correct a

clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461,

464 (Fed. Cir. 1988). A party seeking a writ bears the burden of proving that it has no

other means of attaining the relief desired, Mallard v. U.S. Dist. Court for the Southern Dist.

of Iowa, 490 U.S. 296, 309 (1989), and that the right to issuance of the writ is "clear and

indisputable," Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980).

       AD-II argues that the proceedings in this case prior to the district court’s August 2

decision concerned only claim 16 and not claim 27. AD-II argues that the district court’s

actions are inconsistent with the mandate issued by this court in SRAM II. AD-II asserts

that it seeks to enforce its “right to proceedings consistent with SRAM II [including] the

right not to be compelled to participate in proceedings inconsistent with that opinion.

Mandamus is available to enforce such a right because it cannot be vindicated by

appeal.”

Misc. 858                                     2
       On remand, a district court may, in its discretion, allow new claims to be asserted if

the appellate court’s mandate does not expressly say otherwise. See Rogers v. Hill, 289

U.S. 582, 587-88 (1933) (where appellate court remanded for further proceedings, “the

mandate would not prevent the District Court in the exercise of a sound discretion from

allowing plaintiff, were adequate showing made, to file additional pleadings, vary or expand

the issues . . .”); see also Youghiogheny and Ohio Coal Co. v. Milliken, 200 F.3d 942, 950

(6th Cir. 1999) (“An appellate court’s mandate . . . forecloses a lower court or an agency

only from revisiting issues that the appellate court actually decided”); Biggins v. Hazen

Paper Co., 111 F.3d 205, 209 (1st Cir. 1997) (“mandates require respect for what the

higher court decided, not for what it did not decide”); Nguyen v. United States, 792 F.2d

1500, 1502-03 (9th Cir. 1986) (“Absent a mandate which explicitly directs to the contrary, a

district court upon remand can permit the plaintiff to ‘file additional pleadings, vary or

expand the issues’ . . . the decision whether to allow leave to amend is within the trial

court’s discretion”).

       AD-II has not shown a clear abuse of discretion. Furthermore, mandamus is not

warranted merely to avoid the inconvenience of having to litigate a claim for relief. See

United States v. Watson, 603 F.2d 192, 196-97 (CCPA 1979) (that petitioner may suffer

hardship, inconvenience, or unusually complex trial does not provide basis for court

exercising its discretion to grant mandamus); see also Federal Trade Comm’n v.

Standard Oil Co., 449 U.S. 232, 244 (1980) (expenses and burdens of defending action

do not constitute irreparable harm).      We determine that AD-II has not shown that

mandamus relief is proper.

       Accordingly,

       IT IS ORDERED THAT:

Misc. 858                                    3
      The petition for a writ of mandamus is denied.

                                              FOR THE COURT



      Sept. 28, 2007                           /s/ Richard Linn
         Date                                 Richard Linn
                                              Circuit Judge

cc:   Michael T. Brady, Esq.
      Robert E. Browne, Esq.
      Judge, U.S.D.C., N.D. Ill.
      Clerk, U.S.D.C., N.D. Ill.

s17




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