This case was originally assigned to my late cherished colleague Judge Clifford Scott 1

Green. On January 19, 2006, this case was reassigned to me.

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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

JOHN GAMMINO,

Plaintiff,

v.

SBC COMMUNICATIONS, INC., et al.

Defendants.

Civil Action No. 03-6686

MEMORANDUM

March 29, 2010 Pollak, J.

Defendant SBC Communications (SBC) moves to vacate (docket nos. 62 & 64)

this court’s prior order finding it subject to personal jurisdiction in this court (docket no.

44). Plaintiff, John Gammino, does not oppose the motion. The motion is ripe for

disposition.

I. Facts and Analysis

On December 11, 2003, the plaintiff sued the defendant, SBC, among others for

infringing on two patents U.S. Patent No. 5,809,125 (the 125 patent) and U.S. Patent No.

5,812,650 (the 650 Patent). On March 30, 2005, this court dismissed all other defendants 1
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for lack of personal jurisdiction, but found that SBC was subject to general jurisdiction

(docket. no. 44). SBC moved for reconsideration of the order, which was denied (docket

no. 50). Thereafter, plaintiff instituted suit against one of the defendants dismissed from

this action in the Northern District of Texas. That litigation resulted in the invalidation of

the 125 and 650 patents. Gammino v. Sw. Bell Tel., L.P., 512 F. Supp. 2d 626, 637-38

(N.D. Tex. 2007). Due to the developments in the Texas litigation, the parties agreed to

dismiss the present suit. In an order of October 24th, 2007, I dismissed the action with

prejudice pursuant to Local Rule 41.1(b) (docket no. 59). However, a superseding order

of November 21, 2007, modified the earlier order, at the request of the parties, as follows:

“the dismissal is WITHOUT PREJUDICE to the ability of the defendants to file a motion

to vacate the jurisdictional ruling of this Court” (docket no. 61). The Federal Circuit

affirmed the decision of the Northern District of Texas, Gammino v. Sw. Bell Tel., L.P.,

267 Fed. Appx. 949 (Fed. Cir. 2008), and the Supreme Court denied certiorari. 129 S. Ct.

346 (2008). SBC asks me to vacate my prior order finding it subject to personal

jurisdiction.

SBC relies on the statement of the Court in United States v. Munsingwear, Inc.,

340 U.S. 36 (1950) that “[t]he established practice of the Court in dealing with a civil

case from a court in the federal system which has become moot while on its way here or

pending our decision on the merits is to reverse or vacate the judgment below and remand

with a direction to dismiss.” Id. at 39. However, the Court placed a significant limitation
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on the “practice” in U.S. Bancorp. Mortgage Co. v. Bonner Mall Partnership, 513 U.S.

18 (1994). Under Bancorp, “[w]here mootness results from settlement, . . . the losing

party has voluntarily forfeited his legal remedy by the ordinary processes of appeal or

certiorari, thereby surrendering his claim to the equitable remedy of vacatur.” Id.

I will deny SBC’s request as the current action was mooted by the voluntary

settlement of the parties. The decision of the Northern District of Texas did not moot the

present action; it at most precluded the plaintiff’s claim. Even if the Texas decision were

to prevent plaintiff’s succeeding in this action, the preclusive effect of the Texas decision

presents a case or controversy and results in a judgment on the merits, not one based on

mootness. See Kaiser Indus. Corp. v. Jones & Laughlin Steel Corp., 515 F.2d 964 (3d

Cir. 1975) (finding that a judgment invalidating a patent precluded the litigation at issue

and ordering the district court to enter a judgment for the defendants). Thus, the present

action was not moot until the parties reached settlement. As the Court made clear in

Bancorp, settlement ordinarily bars vacatur.

II. Conclusion

For the reasons stated above, defendant’s motion to vacate is denied. An

appropriate order accompanies this memorandum.