  United States Court of Appeals
      for the Federal Circuit
                ______________________

         INTELLECTUAL VENTURES I LLC,
        INTELLECTUAL VENTURES II LLC,
                Plaintiffs-Appellees

    INVENTION INVESTMENT FUND II, LLC,
INTELLECTUAL VENTURES MANAGEMENT, LLC,
     INVENTION INVESTMENT FUND I, L.P.,
         Third Party Defendants-Appellees

                           v.

   CAPITAL ONE FINANCIAL CORPORATION,
     CAPITAL ONE BANK (USA), NATIONAL
    ASSOCIATION, CAPITAL ONE, NATIONAL
                  ASSOCIATION,
     Defendants/Third Party Plaintiffs-Appellants
               ______________________

                      2018-1367
                ______________________

    Appeal from the United States District Court for the
District of Maryland in No. 8:14-cv-00111-PWG, Judge
Paul W. Grimm.
                ______________________

     ON PETITION FOR PANEL REHEARING
             ______________________

    MATTHEW J. MOORE, Latham & Watkins LLP, Wash-
ington, DC, filed a combined petition for panel rehearing
and rehearing en banc for defendants/third party
2       INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
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plaintiffs-appellants. Also represented by GABRIEL BELL,
ALAN J. DEVLIN, ADAM MICHAEL GREENFIELD, BLAKE
STAFFORD; CHRISTOPHER S. YATES, San Francisco, CA;
ROBERT A. ANGLE, Troutman Sanders LLP, Richmond, VA.

    ROBERT E. FREITAS, Freitas & Weinberg LLP, Redwood
Shores, CA, filed a response to the petition for plaintiffs-
appellees and third party defendants-appellees. Also rep-
resented by JESSICA N. LEAL, DANIEL J. WEINBERG.
                 ______________________

    Before PROST, Chief Judge, BRYSON and REYNA, Circuit
                           Judges.
PER CURIAM.
                          ORDER
    In its petition for rehearing, Capital One focuses
largely on the Fourth Circuit’s decision in Tuttle v. Arling-
ton County School Board, 195 F.3d 698 (4th Cir. 1999).
Capital One argues that Tuttle is inconsistent with the ra-
tionale underlying this court’s decision on the issue of col-
lateral estoppel. In fact, however, Tuttle has little in
common with this case and does not affect the court’s anal-
ysis of the collateral estoppel issue.
    In the litigation that led to the Fourth Circuit’s deci-
sion in Tuttle, the plaintiff first challenged a policy of the
Arlington County School Board that limited admission to a
particular program based in part on race, in order to obtain
diversity among the students. The district court struck
down that policy on two grounds: (1) that the objective of a
diverse student body was not a compelling interest that
would justify decision-making on racial grounds, and (2)
that in any event the school board’s policy was not narrowly
tailored to achieve that objective. Rather than enter a
broad injunction, the district court allowed the school board
to revise its policy in an effort to satisfy the constitutional
objections. After the school board revised its policy, a new
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group of plaintiffs challenged the policy once more, again
arguing that it was unconstitutional. The district court
held the policy unconstitutional, and the school board ap-
pealed.
     One of the arguments made by the plaintiffs on appeal
was that the school board was collaterally estopped from
arguing that diversity could be a compelling governmental
interest, as that argument had been rejected by the district
court in response to the first round of litigation in that
court. The court of appeals rejected the plaintiffs’ argu-
ment on that issue in a single paragraph, citing three
grounds for its ruling. First, the court held that because
the admissions policy in the earlier proceeding in the dis-
trict court was “markedly different than the current Pol-
icy,” the issues decided in the previous proceeding “were
hardly ‘identical’ to the issues currently before this Court.”
195 F.3d at 704. Second, in the sentence on which Capital
One focuses, the court ruled that “[s]ince the district court
[in the first proceeding] also concluded that the [policy at
issue in that proceeding] was not narrowly tailored, the dis-
trict court’s conclusion of law that diversity could never be
a compelling interest was not ‘necessary’ [in that proceed-
ing].” Id. Third, the court noted that because the district
court’s previous ruling had allowed the school board to con-
tinue to attempt “the goals expressed in its admissions pol-
icy” by other means, the decision in the earlier case was not
“final and valid.” 195 F.3d at 701, 704.
    Capital One argues that the second ground on which
the Tuttle court found collateral estoppel inapplicable is
contrary to this court’s analysis of the collateral estoppel
issue in this case. We disagree, for several reasons.
     First, unlike in this case, the two proceedings at issue
in Tuttle were quite different. As the court of appeals
pointed out, the school board altered its policy following the
first proceeding, so the constitutional analysis of the
board’s action was necessarily different. By contrast, as we
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explained in the initial opinion in this case, the two anti-
trust claims in the proceedings before Judge Trenga and
Judge Grimm were essentially the same.
    Second, unlike in this case, the two issues on which the
district court ruled against the school board in Tuttle were
not integrally related. In this case, as we pointed out in
the initial opinion, the two issues were intertwined, inas-
much as the presence of an antitrust market is relevant not
only to whether an antitrust market has been identified
but also to whether the defendant possesses monopoly
power in that market. The issues are not separate and dis-
tinct issues, each of which could stand alone in defeating
the asserted cause of action. In Tuttle, by contrast, the
questions of whether diversity could ever be a compelling
interest, and even if it could, whether the school board’s
policy was narrowly tailored to further diversity were sep-
arate issues; deciding one of those issues did not neces-
sarily decide the other.
    Third, in our initial opinion, we held that collateral es-
toppel was applicable in part because either of the alterna-
tive grounds on which Judge Trenga based his decision
would have been sufficient to decide the case before Judge
Grimm. In Tuttle, however, that was not true. Because the
school board altered its policy between the first proceeding
and the second, the question whether the policy was “nar-
rowly tailored” to achieve the objective of diversity was dif-
ferent between the two cases. Therefore, Tuttle was not a
case in which, as we said of this case, “all of the alternative
determinations in the first case would be independently
sufficient to dispose of the second case.” Op. 28. 1



    1   Capital One argues (Pet. 8) that Judge Trenga
based his decision on two additional grounds: the failure to
allege anticompetitive conduct, and the failure to allege an
exception to the Noerr-Pennington doctrine. But Capital
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     Fourth, unlike in this case, the proceedings in Tuttle
were not co-pending. Following the initial decision of the
district court, the school board in Tuttle adopted a different
policy in an effort to satisfy the court’s analysis in the first
case. In this case, by contrast, Capital One simply sought
to litigate the same claims in Judge Grimm’s court after
having lost on those claims before Judge Trenga. For the
reasons set forth in the Second Circuit’s decision in Wil-
liams v. Ward, 556 F.2d 1143 (2d Cir. 1977), that distinc-
tion also undermines Capital One’s argument that the
Tuttle case indicates that the Fourth Circuit would not ap-
ply collateral estoppel on the facts of this case.
     The Fourth Circuit’s brief treatment of collateral estop-
pel in Tuttle is not materially different from that court’s
decisions in the other collateral estoppel cases discussed in
the initial opinion in this case. See Op. 19-20, 23-25. And,
for the reasons set forth above, nothing in the Tuttle court’s



One previously represented to Judge Grimm that Judge
Trenga’s decision rested on two grounds, not four, and
Judge Grimm relied on that representation in his ruling on
the collateral estoppel issue. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 280 F. Supp. 3d 691, 717 (D. Md.
2017) (quoting Capital One’s argument that “the Virginia
court’s decision rested on the independent grounds that
Capital One’s market definition and monopoly power alle-
gations were both insufficient to state a claim.”); see also
id. at 719-20, 723. And Capital One repeated that repre-
sentation in its brief to this court. Appellant’s Br. 52-53
(“As the district court acknowledged, the sufficiency of the
market definition was certainly only one of two alternative
grounds for dismissal of these claims in the prior Virginia
case.”) (internal quotations and alteration omitted). Capi-
tal One has therefore waived any argument that Judge
Trenga’s decision was based on grounds other than the
ones previously asserted in Capital One’s briefs.
6     INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
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ruling on the collateral estoppel issue is inconsistent with
the analysis in our initial opinion.
     In addition to discussing Tuttle, the petition complains
that by declining to address the district court’s ruling on
the Noerr-Pennington issue, this court has left undisturbed
“the district court’s published and dangerously incorrect
decision concerning the scope of Noerr immunity.” Pet. 16.
“It is paramount,” Capital One urges, “that this Court cor-
rect the district court’s erroneous holding.” Pet. 4.
    The petition notes that the Department of Justice and
the Federal Trade Commission previously filed a brief as
amici curiae expressing concern about the breadth of the
district court’s decision on that issue. Notably, however,
the government did not urge us to decide the Noerr-Pen-
nington issue, but merely said that “if the Court reaches the
Noerr-Pennington issue, it should clarify that Noerr-Pen-
nington does not protect anticompetitive patent acquisi-
tions from antitrust liability, regardless of whether the
patent acquirer engages in protected litigation activity.”
Amici Br. 2 (emphasis added); see also id. at 10–11, 22. Ev-
idently, the government does not share Capital One’s view
that declining to address the Noerr-Pennington issue
would, as Capital One puts it, “obstruct enforcement of the
antitrust laws.” Pet. 17. We are likewise not persuaded
that we are obliged to address a legal issue that is unnec-
essary to the decision of this case.
    Upon consideration thereof,
    IT IS ORDERED THAT:
    The petition for panel rehearing is denied.
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL    7
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                                 FOR THE COURT

December 11, 2019                /s/ Peter R. Marksteiner
      Date                       Peter R. Marksteiner
                                 Clerk of Court
