United States Court of Appeals

FOR THE DISTRICT OF COLUMBIA CIRCUIT

Argued October 13, 2022 Decided February 17, 2023

No. 22-7001

FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER 

ANGEWANDTEN FORSCHUNG E.V.,

APPELLEE

v.

SIRIUS XM RADIO INC.,

APPELLEE

MY-CHAU NGUYEN,

APPELLANT

Appeal from the United States District Court

for the District of Columbia

(No. 1:21-mc-00014)

Mark A. Baghdassarian argued the cause for appellant. 

With him on the briefs were Alan R. Friedman and Shannon H. 

Hedvat.

David C. McPhie argued the cause for appellee. With him 

on the brief was Kelsey L. Schuetz.

Before: SRINIVASAN, Chief Judge, HENDERSON, Circuit 

Judge, and EDWARDS, Senior Circuit Judge.
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Opinion for the Court filed by Senior Circuit Judge

EDWARDS.

EDWARDS, Senior Circuit Judge: In February 2017, 

Fraunhofer-Gesellschaft zur Förderung der angewandten 

Forschung E.V. (“Fraunhofer”) initiated a patent infringements

lawsuit against Sirius XM Radio Inc. (“Sirius XM”) in the 

United States District Court for the District of Delaware. After 

filing suit, Fraunhofer subpoenaed Sirius XM’s former Chief 

Marketing Officer, My-Chau Nguyen, for a deposition. When 

Nguyen failed to appear for her deposition, the parties filed 

motions in the District Court for the District of Columbia 

(“District Court”), to address the situation. The District Court 

denied Nguyen’s motion to quash the subpoena, ordered her to 

sit for her deposition, found her in contempt for defying the 

subpoena, and expressed an intent to award sanctions. Nguyen 

sat for her deposition and then, before any judgment had been 

issued on sanctions, she appealed the District Court’s orders 

against her. Before this court, Nguyen argues that the District 

Court abused its discretion in compelling her deposition, 

finding her in contempt, and expressing an intent to award 

sanctions. 

We dismiss the appeal for want of jurisdiction. Nguyen’s 

challenge to the District Court’s order compelling her 

deposition is moot because her deposition testimony has been 

given. Nguyen’s challenges to the District Court’s contempt 

finding and intent to award sanctions raise matters relating to a 

discovery proceeding ancillary to a patent suit which are within 

the exclusive jurisdiction of the United States Court of Appeals 

for the Federal Circuit. See 28 U.S.C. § 1295(a)(1).

Nguyen requests that, rather than dismissing her appeal, 

we transfer the case to the Federal Circuit pursuant to 28 U.S.C. 

§ 1631. That provision states that if a “court finds that there is 
3

a want of jurisdiction, the court shall, if it is in the interest of 

justice, transfer such action or appeal to any other such court in 

which the action or appeal could have been brought at the time 

it was filed or noticed.” 28 U.S.C. § 1631. However, we cannot 

transfer this case to the Federal Circuit because, under the law 

of that Circuit, Nguyen’s appeal could not have been brought 

in the Federal Circuit at the time when it was noticed in this 

court. The District Court’s contempt finding and intent to 

award sanctions are not final, appealable orders under Federal 

Circuit law because no final judgment has been issued on 

sanctions. We therefore lack the authority to transfer this 

appeal to the Federal Circuit under 28 U.S.C. § 1631.

In these circumstances, we are obliged to dismiss 

Nguyen’s appeal for want of jurisdiction. The case will be 

remanded to the District Court for final disposition of any 

pending matters. If Nguyen is aggrieved after the District Court 

acts on the contempt finding and possible sanctions, she may 

appeal to the Federal Circuit.

I. BACKGROUND

As mentioned above, in February 2017, Fraunhofer filed a 

patent infringements lawsuit against Sirius XM in the United 

States District Court for the District of Delaware. See 

Fraunhofer-Gesellschaft zur Förderung der Angewandten 

Forschung E.V. v. Sirius XM Radio Inc., No. 1:17-cv-00184 

(D. Del. Feb. 22, 2017). Fraunhofer then subpoenaed Sirius 

XM’s former Chief Marketing Officer My-Chau Nguyen for 

her testimony in a deposition scheduled for December 11, 

2020. Joint Appendix (“JA”) 625-27. 

Nguyen, who resided in the Washington, DC area, did not 

appear for her deposition on December 11, 2020. This 

prompted the parties to file motions in the District Court for the 
4

District of Columbia. On February 19, 2021, Nguyen filed a 

motion to quash the subpoena. On March 5, 2021, Fraunhofer 

responded with a cross-motion to compel Nguyen’s deposition 

and a motion for sanctions.

On December 7, 2021, the District Court denied Nguyen’s 

motion to quash, granted in part and held in abeyance in part

Fraunhofer’s cross-motion to compel, and ordered Nguyen to 

sit for a deposition. Nguyen v. Fraunhofer-Gesellschaft Zur 

Forderung Der Angewandten Forschung E.V., No. 21-0014, 

2021 WL 5800741 (D.D.C. Dec. 7, 2021). Moreover, having 

found no adequate excuse for Nguyen to disobey the subpoena 

in the first instance, the District Court found Nguyen in 

contempt, id. at *4, and it expressed an intent to enter sanctions, 

id. However, the District Court decided to “defer ruling on 

sanctions until Fraunhofer submits documentation on fees and 

costs.” Id. Accordingly, it ordered Fraunhofer to “submit to the 

Court documentation reflecting the fees and costs it incurred to 

move to compel Petitioner's compliance with the subpoena, up 

to and including the deposition itself,” noting that “[f]ailure to 

submit this documentation may result in the denial of 

sanctions.” Id. at *5.

Complying with the District Court’s order, Nguyen sat for 

deposition on January 5, 2022. On January 6, 2022, she 

appealed the District Court’s orders, challenging both the order 

compelling her deposition as well as the contempt citation and 

intent to enter sanctions.

After Nguyen noticed her appeal, Fraunhofer submitted 

documentation regarding its fees to the District Court. January 

26, 2022, Nguyen filed a request with the District Court to 

respond to the reasonableness of Fraunhofer’s fees and the 

adequacy of its documentation. However, the District Court 
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held in abeyance the fee dispute pending resolution of this 

appeal. 

 

II. ANALYSIS

A. Standard of Review

In situations in which the court has jurisdiction to entertain 

an appeal, it will review for abuse of discretion District Court 

discovery orders granting or denying motions to compel, as 

well as findings of civil contempt. See Laborers' Int'l Union of 

N. Am. v. U.S. Dep't of Just., 772 F.2d 919, 921 (D.C. Cir. 

1984); Int’l Ass’n of Machinists & Aerospace Workers, AFLCIO v. E. Airlines, Inc., 849 F.2d 1481, 1486 (D.C. Cir. 1988). 

However, this court will not address the merits of any such 

matters if the case is moot, Nichols v. Pierce, 740 F.2d 1249, 

1260 (D.C. Cir. 1984), or if the matters on appeal are within 

the exclusive jurisdiction of another court, see Ortiz v. 

Fibreboard Corp., 527 U.S. 815, 816 (1999) (“Ordinarily, of 

course, this or any other Article III court must be sure of its 

own jurisdiction before getting to the merits.”).

B. The Two Matters Raised in This Appeal

We bifurcate Nguyen’s appeal into a challenge to the 

District Court’s order compelling her deposition and a 

challenge to the District Court’s contempt finding and intent to 

enter sanctions. We will address these matters in order. 

We first hold that we have no jurisdiction to consider 

Nguyen’s appeal of the order compelling her deposition 

because the matter is moot. We likewise hold that we have no 

jurisdiction to assess Nguyen’s challenges to the District 

Court’s contempt finding and intent to award sanctions because 
6

these are matters within the exclusive jurisdiction of the United 

States Court of Appeals for the Federal Circuit.

C. Deposition Order

“Numerous courts have held that an appeal from 

enforcement of a subpoena becomes moot once the party has 

complied with the subpoena.” Office of Thrift Supervision 

Dep't of Treasury v. Dobbs, 931 F.2d 956, 957 (D.C. Cir. 

1991); see also United States v. Arthur Andersen & Co., 623 

F.2d 720, 722 (1st Cir. 1980) cert. denied, 449 U.S. 1021 

(1980) (Because appellant “has produced all of the documents 

forming the subject matter of this appeal, the controversy 

presented to this court appears, on its face, to be moot.”); 

Richmark Corp. v. Timber Falling Consultants, 959 F.2d 1468, 

1479 (9th Cir. 1992) (“Compliance with a discovery order 

renders moot an appeal of that order.”); Baldridge v. United 

States, 406 F.2d 526, 527 (5th Cir. 1969) (Where appellant 

complied with the court order enforcing subpoena, “[t]here is 

nothing on this appeal for this Court to decide. The case is 

moot.”). 

By sitting for her deposition on January 5, 2022, Nguyen 

complied with the District Court’s order compelling her 

deposition. Because she complied with that order, her appeal 

of that order is moot and we lack jurisdiction to consider it.

D. Contempt Citation

As noted above, we have no authority to address Nguyen’s 

challenges to the District Court’s contempt finding and intent 

to award sanctions. These are matters for the Federal Circuit to 

address if a proper appeal reaches that court. And we have no 

authority to transfer these claimsto the Federal Circuit because, 

under Federal Circuit law, the contempt finding and intent to 
7

award sanctions are not final and appealable until the District 

Court enters a judgment on sanctions. We thus dismiss this part 

of Nguyen’s appeal for want of jurisdiction. If the District 

Court enters judgment on sanctions, the contempt finding and 

sanctions order may be appealable to the Federal Circuit.

1. Exclusive Jurisdiction Lies with the Federal Circuit

The Federal Circuit is vested with exclusive jurisdiction “of 

an appeal from a final decision of a district court . . . in any 

civil action arising under . . . any Act of Congress relating to 

patents[.]” 28 U.S.C. § 1295(a)(1) (2012). Our sister circuits

have held that this exclusive jurisdiction encompasses appeals 

of discovery orders ancillary to a patent suit. See McCook 

Metals LLC v. Alcoa, Inc., 249 F.3d 330, 332 (4th Cir. 2001) 

(holding that review of ancillary discovery proceeding to 

enforce subpoena in connection with underlying patent matter 

must proceed in the Federal Circuit); Dorf & Stanton 

Commc'ns, Inc. v. Molson Breweries, 56 F.3d 13, 14-15 (2d 

Cir. 1995) (noting Federal Circuit’s exclusive jurisdiction 

“extends to appeals from appealable orders in ancillary 

discovery proceedings”); Solarex Corp. v. Arco Solar, Inc., 870 

F.2d 642, 643 (Fed. Cir. 1989) (“This court, rather than a 

regional circuit, has jurisdiction over” an ancillary discovery 

dispute “because the underlying litigation is a patent suit under 

28 U.S.C. § 1338(a) (1982).”). As the Fourth Circuit 

recognized:

Although it is true that the ancillary court's first-layer 

authority derives from Federal Rules of Civil 

Procedure 37(a)(1) and 45, which assign to it the 

responsibility of issuing and enforcing subpoenas in its 

district, Rules 37 and 45 do not confer subject matter 

jurisdiction upon the courts. Rather, an ancillary 

court's power to issue and enforce subpoenas is entirely 
8

dependent upon the jurisdiction of the court in which 

the underlying action is pending.

McCook Metals, 249 F.3d at 334. 

Because federal courts are courts of limited jurisdiction, 

the discovery dispute in the District of Columbia District Court 

must have arisen under some statute conferring jurisdiction. 

Nguyen has not identified any such source of subject matter 

jurisdiction, other than by piggybacking on the jurisdiction of 

the underlying action in the District of Delaware. It is 

undisputed that the underlying litigation between Fraunhofer 

and Sirius XM in the District of Delaware arises under an Act 

of Congress relating to patents. That makes Nguyen’s dispute 

in the District of Columbia District Court a discovery 

proceeding ancillary to a patent suit. We therefore join our 

sister circuits and hold that exclusive jurisdiction of Nguyen’s 

appeal of the contempt citation and intent to award sanctions 

from that ancillary discovery proceeding lies with the Federal 

Circuit.

Contrary to Nguyen’s suggestion, nothing in the 

amendment to 28 U.S.C. § 1295 changes this analysis. The 

current version of the statute vests the Federal Circuit with 

exclusive jurisdiction of an appeal from a final district court 

decision in “any civil action arising under . . . any Act of 

Congress relating to patents[.]” 28 U.S.C. § 1295(a)(1) (2012).

The prior version vested the Federal Circuit with exclusive 

jurisdiction of an appeal from a final district court decision “if 

the jurisdiction of that court was based, in whole or in part, on 

section 1338 of this title[.]” 28 U.S.C. § 1295(a)(1) (2006). 

Section 1338 in turn grants the federal district courts original 

jurisdiction of, inter alia, “any civil action arising under any 

Act of Congress relating to patents[.]” 28 U.S.C. § 1338(a). 

Because the underlying action in the District of Delaware arises 
9

under an Act of Congress relating to patents, the prior version 

of Section 1295 is functionally equivalent to the current version 

of Section 1295 for purposes of this appeal. See Hudson 

Furniture, Inc. v. Lighting Design Wholesalers Inc., No. 20-

3299, 2021 WL 6105489, at *1 n.1 (2d Cir. Dec. 21, 2021) 

(“[W]e see no reason that the revised language [of Section 

1295] would alter the grounds for Federal Circuit jurisdiction 

over appeals from district courts.”).

Thus, the appeal of the contempt finding and intent to 

award sanctions belongs to the Federal Circuit.

2. Transfer Is Inappropriate

Nguyen requests that, if we find that exclusive jurisdiction 

lies with the Federal Circuit, we transfer her appeal to the 

Federal Circuit. In pressing this request, Nguyen relies on 28 

U.S.C. § 1631, which states that if a “court finds that there is a 

want of jurisdiction, the court shall, if it is in the interest of 

justice, transfer such action or appeal to any other such court in 

which the action or appeal could have been brought at the time 

it was filed or noticed.”

Even if we assume that transfer would be in the interest of 

justice, we deny Nguyen’s request to transfer because we find 

this appeal could not have been brought in the Federal Circuit 

at the time when it was noticed in this court. 

We apply Federal Circuit law to determine whether 

Nguyen’s appeal could have been brought at the time it was 

noticed. See McCook Metals, 249 F.3d at 335-36 (applying 

Federal Circuit law to transfer analysis). The purpose of 

Section 1631 is to functionally recreate a situation in which the 

litigation was brought in the proper court – here the Federal 

Circuit – at the outset. Had this appeal been brought in the 
10

Federal Circuit at the outset, the Federal Circuit would have 

applied its own law to determine whether it could hear the 

appeal. See Int'l Elec. Tech. Corp. v. Hughes Aircraft Co., 476 

F.3d 1329, 1330 (Fed. Cir. 2007) (“We apply our own law, 

rather than regional circuit law, to questions relating to our own 

appellate jurisdiction.”). 

Under established precedent, Nguyen could not have 

sought review in the Federal Circuit of the District Court’s 

contempt finding and concomitant intent to award sanctions.

The Federal Circuit has held that a contempt order is not 

appealable “where no sanction ha[s] yet been imposed for that 

contempt and proceedings with respect to that question 

remain[] ongoing at the time the appeal before us [i]s filed.” 

Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 759 F.3d 

1333, 1340 (Fed. Cir. 2014) (quoting Aevoe Corp. v. AE Tech 

Co., 727 F.3d 1375, 1380-81 (Fed. Cir. 2013)); see also LMK 

Enterprises, Inc. v. Perma-Liner Indus., Inc., 423 F. App'x 972, 

973 (Fed. Cir. 2011) (“As a general rule, an adjudication of 

civil contempt, such as here, is not appealable until sanctions 

have been imposed.”); Seiko Epson Corp. v. Nu-Kote Int'l, Inc., 

190 F.3d 1360, 1369 (Fed. Cir. 1999) (citing Hoffman v. Beer 

Drivers & Salesmen's Local Union No. 888, 536 F.2d 1268, 

1273 (9th Cir. 1976), for the proposition that a “contempt order 

[was] deemed [a] final order and appealable when the fines 

assessed were ordered to be paid”).

Similarly, the Federal Circuit has held that a “district 

court's decision granting sanctions is a separate order which is 

not final and appealable until the district court has decided the 

amount of sanctions.” Orenshteyn v. Citrix Sys., Inc., 691 F.3d 

1356, 1358 (Fed. Cir. 2012); see also View Eng'g, Inc. v. 

Robotic Vision Sys., Inc., 115 F.3d 962, 964-65 (Fed. Cir. 1997) 

(dismissing appeal of Rule 11 sanctions order where “district 

court has not yet determined the [sanction] amount”).
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Here, although the District Court found Nguyen in 

contempt, it had not yet entered a sanctions award when the 

appeal was filed because Fraunhofer had not submitted

documentation of the fees it incurred. Indeed, the District Court 

expressly noted that “[f]ailure to submit this documentation 

may result in the denial of sanctions.” Nguyen, 2021 WL 

5800741, at *5. Because no sanctions award has been issued 

since the District Court’s contempt finding, the contempt 

finding and intent to award sanctions are not final and 

appealable under Federal Circuit law. Therefore, we have no 

authority to transfer Nguyen’s appeal to the Federal Circuit

under 28 U.S.C. § 1631.

III. CONCLUSION

For the reasons set forth above, we dismiss this appeal for 

want of jurisdiction. The case will be remanded to the District 

Court for final disposition of any pending matters. If Nguyen 

is aggrieved after the District Court acts on the contempt 

finding and possible sanctions, she may seek to appeal to the 

Federal Circuit.

So ordered.