Feit Electric Company, Inc. v. Cfl Technologies LLC

Case: 20-110 Document: 24 Page: 1 Filed: 02/03/2020

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

FEIT ELECTRIC COMPANY, INC., Plaintiff-Petitioner

v.

CFL TECHNOLOGIES LLC, Defendant-Respondent ______________________

2020-110 ______________________

On Petition for Permission to Appeal pursuant to 28 U.S.C. Section 1292(b) from the United States District Court for the Northern District of Illinois in No. 1:13-cv- 09339, Judge Sharon Johnson Coleman. ______________________

ON PETITION ______________________

Before REYNA, BRYSON, and TARANTO, Circuit Judges. TARANTO, Circuit Judge. ORDER Feit Electric Company, Inc. petitions for permission to appeal an interlocutory order certified by the United States District Court for the Northern District of Illinois. CFL Technologies LLC opposes the petition. OSRAM

Case: 20-110 Document: 24 Page: 2 Filed: 02/03/2020 2 FEIT ELECTRIC COMPANY, INC. v. CFL TECHNOLOGIES LLC

Sylvania, Inc., LEDVANCE, LLC, and General Electric Company (collectively, “Amici”) move unopposed for leave to file a brief amici curiae in support of the petition. The underlying proceedings involve two patents. As relevant here, Feit argued that one of the patents, U.S. Patent No. 6,172,464, is unenforceable for inequitable conduct as a result of issue preclusion, based on prior judgments so holding before this court significantly changed the law of inequitable conduct in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc). The district court held that issue preclusion does not apply here, invoking the change-of-law exception to issue preclusion recognized in Dow Chemical Co. v. Nova Chemicals Corp., 803 F.3d 620 (Fed. Cir. 2015), and other cases. The case is continuing. Under 28 U.S.C. § 1292(b), a district court may certify that an order that is not otherwise appealable is one involving a controlling question of law as to which there is substantial ground for difference of opinion and for which an immediate appeal may materially advance the ulti- mate termination of the litigation. The district court in this case made that certification for its order denying issue preclusion. This court must exercise its own discre- tion in deciding whether to grant permission to appeal an interlocutory order. See In re Convertible Rowing Exercis- er Patent Litig., 903 F.2d 822, 822 (Fed. Cir. 1990). We deny such permission. The petition for interlocutory appeal in this matter concerns only one of the patents at issue in the underlying proceeding. Moreover, Feit’s argument for issue preclu- sion rests ultimately on a single contention based on a single case—that this court’s decision in Morgan v. Dep’t of Energy, 424 F.3d 1271 (Fed. Cir. 2005), which found issue preclusion despite a change-in-law argument, is inconsistent with Dow and other cases on the change-of- law exception. Feit and the amici read too much into

Case: 20-110 Document: 24 Page: 3 Filed: 02/03/2020 FEIT ELECTRIC COMPANY, INC. v. CFL TECHNOLOGIES LLC 3

Morgan. All that Morgan rejected was a version of the change-in-law exception “so broad” that it would deny preclusion based on judicial decisions that merely “clarify earlier interpretations of a statute.” 424 F.3d at 1276. It did not reject the higher standard for a result-altering intervening change in law required by Dow Chemical, which was applied in this case based on the significant change of law made by this court in Therasense. 1 Having considered the petition and opposition thereto, we conclude that interlocutory review is not appropriate here. Accordingly, IT IS ORDERED THAT: (1) The petition for permission to appeal is denied. (2) The motion for leave to file a brief amicus curiae is granted. The brief, ECF No. 12 (pages 9–27), is accepted for filing.

Case: 20-110 Document: 24 Page: 4 Filed: 02/03/2020 4 FEIT ELECTRIC COMPANY, INC. v. CFL TECHNOLOGIES LLC

FOR THE COURT

February 03, 2020 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court s35

Footnotes

[1] Morgan was necessarily limited to a broad possi- ble exception, and rejected only that, not the narrower, more demanding exception set out in Dow Chemical. The intervening decisions, Huffman v. Office of Pers. Mgmt., 293 F.3d 1341, 1348–49 (Fed. Cir. 2001), and Willis v. Dep’t of Agric., 141 F.3d 1139, 1143 (Fed. Cir. 1998), that this court cited in Morgan, 424 F.3d at 1276 n.1, were at most clarifications of the same principle of law already set forth in Horton v. Dep’t of the Navy, 66 F.3d 279, 282 (Fed. Cir. 1995)—which both Huffman and Willis cited, and which was rendered before the earlier agency decision whose preclusive effect was in question. See Morgan v. Dep’t of Energy, 81 M.S.P.R. 48, 50 (1999) (determination of protected status of certain disclosure made in 1996 and became final in 1997).