Case: 13-161    Document: 16     Page: 1   Filed: 08/16/2013




          NOTE: This order is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

  IN RE VIGILANT VIDEO, INC. AND THE CITY OF
             PORT ARTHUR, TEXAS,
                    Petitioners.
              ______________________

               Miscellaneous Docket No. 161
                 ______________________

    On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 10-CV-173, Judge Rodney Gilstrap.
                 ______________________

                     ON PETITION
                 ______________________
  Before LOURIE, O’MALLEY, and REYNA, Circuit Judges.
O’MALLEY, Circuit Judge.
                        ORDER
     The United States District Court for the Eastern Dis-
trict of Texas has a standing order requiring parties
seeking to file certain motions to first file a letter brief
and request leave of court to file such motion. After the
patent in this case was subjected to reexamination pro-
ceedings, petitioners were permitted leave to file a motion
for summary judgment of non-infringement, which was
denied-in-part. Petitioners, however, were not permitted
to file a subsequent motion for summary judgment con-
cerning patent invalidity of newly added infringement
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2                           IN RE VIGILANT VIDEO, INC.




contentions. They now seek review of the denial of sum-
mary judgment and denial of leave to file rulings pursu-
ant to this court’s authority under the All Writs Act, 28
U.S.C. § 1651.
                             I.
   Vigilant Video, Inc. manufactures a device for scan-
ning and comparing license plates that it sold to the police
department in Port Arthur, Texas. Respondent John B.
Adrain is also in the monitoring system market.
    In May 2010, Adrain filed suit against Vigilant and
Port Arthur (the “petitioners”) in the Eastern District of
Texas, alleging that the sale and use of the license plate
recognition system infringed claims 1-3 and 6-10 of his
patent (No. 5,831,669) disclosing a system for recording
images and identifying correlation or lack of correlation
with the images.
    In August 2012, the Patent and Trademark Office
(PTO) issued a reexamination certificate. That certificate
canceled Claim 1, amended Claim 2, and added several
claims, including 30-32, 35-39, 41-42, and 51. Petitioners
responded to the reexamination certificate by moving for
summary judgment asserting, in relevant part, that they
did not infringe Claim 6, which was not part of the reex-
amination proceedings, but claimed a system in accord-
ance with now amended Claim 2.
    According to petitioners, Claim 6 now had to be read
with the limitation that the claimed system comprised “a
movably mounted digital camera adapted for receiving
images of a space to be monitored for directly outputting
digital image data[.]” (emphasis added).         Petitioners
claimed that because their device used an analog camera
they did not infringe and, in any event, could only be
liable for damages after the reexamination certificate
issued under the doctrine of intervening rights.
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IN RE VIGILANT VIDEO, INC.                                 3



    On May 13, 2013, the district court held, in relevant
part, that “Claim 6 still exists as originally issued, includ-
ing its dependence from the canceled claim 1 and original
claim 2.” The court concluded that, because Claim 6 was
not part of the reexamination proceedings, in accordance
with MPEP § 2260.01, “claim 6 still exists as originally
issued.”
     On June 28, 2013, petitioners requested permission to
file another motion for summary judgment concerning
newly added claims 30-32, 35-39, and 41-42, which the
court had allowed respondent to include in his infringe-
ment contentions. In their letter brief, petitioners stated
that they intended to present the following three argu-
ments: (1) that the newly added claims had not been
plead, which was also the subject of a motion to dismiss;
(2) that the claims were invalid; and (3) that they intend-
ed to argue “[t]hose same issues raised by defendants in
[their] first Motion for Summary Judgment,” which the
court had found to be moot. Petitioners acknowledged
that the court’s docketing control order had set forth a
deadline of April 3, 2013 for filing dispositive motions, but
argued that the deadline should be disregarded in light of
the fact that Adrain had been allowed to amend his
complaint and discovery regarding the newly added
claims was ongoing.
     On July 8, 2013, the district court denied petitioners’
request for leave to file its motion for summary judgment
without explanation. On that same day, the district court
issued a separate order that, among other things, amend-
ed the docket control order to extend the deadline for
filing dispositive motions to August 2, 2013.
                             II.
                             A.
    Because the writ of mandamus is reserved for “ex-
traordinary situations,” and is thus to be invoked only
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4                           IN RE VIGILANT VIDEO, INC.




sparingly, two requirements must be satisfied before
issuance: first, petitioners must show a “clear and indis-
putable” right to the writ and, second, petitioners must
have “no other adequate means to attain the relief [de-
sired].” Kerr v. U. S. Dist. Court for N. Dist. Of Cal., 426
U.S. 394, 403 (1976).
    In light of this exacting standard, courts have recog-
nized that mandamus is generally unavailable to parties
seeking review of the merits of an order denying a motion
for summary judgment, even an erroneous one. See
Commc’n Workers of Am. v. Am. Tel. & Tel. Co., 932 F.2d
199, 210 (3d Cir. 1991); see also Rigby v. Damant, 486
F.3d 692, 693 (1st Cir. 2007); Chappell & Co., Inc. v.
Frankel, 367 F.2d 197, 199-200 (2d Cir. 1966); cf. In re
Roche Molecular Sys., Inc., 516 F.3d 1003, 1004 (Fed. Cir.
2008).
     This case is quite different from a case like Missis-
sippi Chemical Corp. v. Swift Agricultural Chemicals
Corp., 717 F.2d 1374 (Fed. Cir. 1983), upon which peti-
tioners rely. In Mississippi Chemical, we recognized that
mandamus may issue to direct a trial court to grant
summary judgment in the extraordinary circumstance
where it is clear a trial can be avoided, such as where the
patent-in-suit previously had been invalidated. Id. at
1380. While the PTO decision here altered the asserted
claims, nothing in the PTO reexamination proceedings
rendered Claim 6, or any of the other now asserted
claims, invalid. Thus, unlike in Mississippi Chemical,
this is not a case in which it is clear that trial can and
should be avoided.
    In any event, petitioners have not shown the neces-
sary lack of another adequate means to obtain the relief of
invalidating some or all of the asserted claims—both the
trial and appellate process remain in which those issues
can be addressed. If the district court applies the wrong
construction of a claim during trial, the jury reaches an
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IN RE VIGILANT VIDEO, INC.                               5



unsupported conclusion, or damages are not correctly
addressed, such errors can be corrected on appeal from
final judgment.
                             B.
    A district court’s failure to consider the merits of a
summary judgment motion when it had the duty to do so
is subject to mandamus review. See In re Sch. Asbestos
Litig., 977 F.2d 764, 793 (3d Cir. 1992). Petitioners
contend that is exactly what happened here when their
second request to file a motion for summary judgment
was denied without explanation.
    A district court has broad discretion in deciding how
to conduct summary judgment proceedings. See generally
Chevron U.S.A., Inc. v. Traillour Oil Co., 987 F.2d 1138,
1155-56 (5th Cir. 1993). The use of stated deadlines and
limits on the number of filings reasonably fall within the
court’s discretion. See, e.g., Fed. R. Civ. P. 56(b).
    It has no discretion, however, to arbitrarily refuse an
otherwise timely and allowable summary judgment
motion. See Brown v. Crawford Cnty., Ga., 960 F.2d 1002,
1008-10 (11th Cir. 1992); Sch. Asbestos Litig., 977 F.2d at
794-95; see also Johnson v. United States, 460 F.3d 616,
620-21 (5th Cir. 2006); cf. Eisemann v. Greene, 204 F.3d
393, 397 (2d Cir. 2000). Though respondent argues that
petitioners’ motion was untimely, the court order extend-
ing the dispositive motion deadline to August 2, 2013
indicates otherwise.
     The ground upon which the district court denied leave
to file a motion for summary judgment is unclear. While
untimeliness or earlier excessive, yet frivolous motions
practice may have been concerns, as respondent asserts,
there is no way to know on the current record. Given this
gap in the record, we think the better course is to allow
petitioners to seek the missing explanation(s) from the
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6                               IN RE VIGILANT VIDEO, INC.




district court so the need for mandamus intervention may
be avoided, if appropriate.
      Accordingly,
      IT IS ORDERED THAT:
      The petition is denied.


                                        FOR THE COURT

                                        /s/ Daniel E. O’Toole
                                        Daniel E. O’Toole
                                        Clerk

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