United States Court of Appeals 

for the Federal Circuit ______________________ 

MURATA MACHINERY USA, MURATA 

MACHINERY, LTD.,

Plaintiffs-Appellants

v.

DAIFUKU CO., LTD., DAIFUKU AMERICA CORP.,

Defendants-Appellees

______________________ 

2015-2094

______________________ 

Appeal from the United States District Court for the 

District of Utah in No. 2:13-cv-00866-DAK-BCW, Senior 

Judge Dale A. Kimball.

______________________ 

Decided: August 1, 2016

______________________ 

DAVID HESKEL BEN-MEIR, Norton Rose Fulbright US 

LLP, Los Angeles, CA, argued for plaintiffs-appellants. 

Also represented by MARK EMERY, JONATHAN S.

FRANKLIN, Washington, DC; MARK BETTILYON, Thorpe 

North & Western, Salt Lake City, UT.

JEFFREY K. SHERWOOD, Blank Rome LLP, Washington, DC, argued for defendants-appellees. Also represented by DIPU A. DOSHI, CHARLES J. MONTERIO, JR., MARK J.

THRONSON, MEGAN R. WOOD. 

______________________ 
2 MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 

Before REYNA, CHEN, and STOLL, Circuit Judges.

STOLL, Circuit Judge. 

This is an interlocutory appeal from a patent infringement lawsuit that Murata Machinery USA and 

Murata Machinery, Ltd. (collectively “Murata”) filed 

against Daifuku Co., Ltd. and Daifuku America Corp. 

(collectively “Daifuku”) in the United States District 

Court for the District of Utah. Daifuku petitioned for

inter partes review of all of the asserted patents, and the 

district court then stayed the litigation. Murata moved to 

lift the stay and for entry of a preliminary injunction, but 

the district court denied the motions in a single order. We 

hold that the district court did not err in refusing to lift 

the stay, but that its cursory denial of the preliminary 

injunction did not satisfy Rule 52(a)(2) of the Federal 

Rules of Civil Procedure, which requires that a court state 

findings and conclusions supporting denial of a preliminary injunction. Thus, we affirm the district court’s order 

as it pertains to the stay, but vacate the order with respect to the preliminary injunction and remand for proceedings consistent with this opinion. 

BACKGROUND

Murata and Daifuku are direct competitors in the 

manufacture and maintenance of automated material 

handling systems (“AMHS”). AMHS use robotic vehicles 

suspended on tracks from the ceilings of semiconductor 

cleanrooms to move and manipulate semiconductor components. In September 2013, Murata sued Daifuku in the 

United States District Court for the District of Utah

alleging infringement of three of its patents: U.S. Patent 

Nos. 7,165,927, 7,771,153, and 8,197,172 (collectively, the 

“Original Patents”). One year later, in September 2014, 

Murata moved to amend its complaint to further assert 

U.S. Patent Nos. 6,113,341 and 6,183,184 (collectively, the 

“Additional Patents”). Shortly thereafter, Daifuku peti-
MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 3

tioned the Patent Trial and Appeals Board of the Patent 

and Trademark Office for inter partes review (“IPR”) of 

the Original Patents and concurrently moved to stay the 

district court litigation pending the outcome of the IPR 

proceedings. Daifuku relied on the traditional threefactor test district courts use in stay determinations: 

(1) stage of the proceedings; (2) potential for the stay to 

simplify issues in case; and (3) undue prejudice to the 

non-moving party or a clear tactical advantage for the 

moving party resulting from stay. Murata responded, 

opposing the stay and advocating that the district court 

consider a fourth factor in addition to the three Daifuku 

had briefed: potential for a stay to reduce the burden of 

litigation on the parties and the court. 

On February 12, 2015, the district court, relying on 

the four-factor test advocated by Murata, stayed the case 

pending the Board’s resolution of Daifuku’s IPR petitions. 

The court’s order also granted leave for Murata to amend 

its complaint to add the Additional Patents, but made 

clear that it was staying the entire case, including any 

proceedings involving the Additional Patents if Murata 

chose to add them. The district court justified staying the 

entire case based on Murata’s assertion in its motion to 

amend that litigating the Original and Additional Patents 

piecemeal would make little sense due to a significant 

overlap in discovery. The district court also stated, however, that Murata could file a motion to lift the stay 

regarding the Additional Patents if a legitimate reason for 

doing so materialized. 

Murata amended its complaint on February 19, 2015, 

to include the Additional Patents. After the Board instituted an IPR proceeding on each of the Original Patents, 

on May 28, 2015, Murata moved to lift the stay only with 

regard to the Additional Patents, this time relying on the 

three-factor test Daifuku had first introduced and without 

mentioning the additional “burden of litigation” factor it 

advocated when it opposed issuance of the stay. Amidst 
4 MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 

motions practice regarding lifting the stay, Daifuku filed 

IPR petitions on the Additional Patents.1 Before the 

district court decided Murata’s pending motion to lift the 

stay, Murata moved for a preliminary injunction against 

Daifuku based on purported infringement of the Additional Patents. 

The district court denied Murata’s motion to lift the 

stay, relying on the same four-factor test it applied when 

it issued the stay and finding that every factor that

weighed in favor of granting the stay continued to do so. 

The district court again cited Murata’s earlier argument, 

made in its motion for leave to amend the complaint to 

include the Additional Patents, that litigating the Original Patents and Additional Patents separately would 

make “no sense.” Murata Mach. USA, Inc. v. Daifuku Co.

(Dist. Ct. Order), No. 2:13-cv-00866, 2015 WL 5178456, at 

*1 (D. Utah Sept. 4, 2015). The court reasoned that lifting 

the stay for only the Additional Patents might cause 

duplicative discovery and mentioned that, indeed, the 

Additional Patents now faced potential IPR proceedings. 

Thus, the district court denied Murata’s motion to lift the 

stay. The court then held that Murata untimely filed its 

motion for preliminary injunction and concluded that

“[b]ecause the court has now declined to lift the stay, the 

Motion for Preliminary Injunction is denied without 

 

1 We take notice that the Board instituted IPR proceedings for the Additional Patents after the parties 

completed briefing in this appeal. See Daifuku Co. v. 

Murata Mach., Ltd., IPR2015–01538, Paper No. 11 

(P.T.A.B. January 19, 2016); Daifuku Co. v. Murata 

Mach., Ltd., IPR2015–01539, Paper No. 11 (P.T.A.B. 

Jan. 19, 2016); Oral Argument at 6:45–8:31, available at

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=

2015-2094.mp3. 
MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 5

prejudice to renew at a later date, if appropriate.” Id.

at *2. 

Murata appeals the district court’s refusal to lift the 

stay and its denial of the preliminary injunction. 

DISCUSSION

“It is axiomatic that the initial inquiry in any appeal 

is whether the court to which appeal is taken has jurisdiction to hear the appeal.” Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 759 F.3d 1333, 1336 (Fed. Cir. 2014)

(internal citation omitted) (quoting Woodard v. Sage 

Prods., Inc., 818 F.2d 841, 844 (Fed. Cir. 1987) (en banc)). 

We first recognize that we have jurisdiction to review an 

interlocutory order denying a preliminary injunction in a 

patent infringement lawsuit under 28 U.S.C. § 1292(a)(1) 

& (c)(1). “[I]f the trial court’s stay order had the practical 

effect of denying [appellant]’s motion for a preliminary 

injunction,” we have interlocutory jurisdiction. Procter & 

Gamble Co. v. Kraft Foods Glob., Inc., 549 F.3d 842, 846 

(Fed. Cir. 2008). 

We typically do not have interlocutory jurisdiction 

over a district court’s decision to stay or not stay a case. 

See Intellectual Ventures II LLC v. JPMorgan Chase & 

Co., 781 F.3d 1372, 1375 (Fed. Cir. 2015) (explaining that 

“decisions on motions to stay ordinarily are not immediately appealable under the final judgment rule” (citing 

Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 

U.S. 271, 277–78 (1988))). During interlocutory review,

however, certain “orders, which ordinarily would be 

nonappealable standing alone, may be reviewed” under 

the doctrine of pendent jurisdiction, at the court’s discretion. Procter & Gamble, 549 F.3d at 846 (quoting Intermedics Infusaid, Inc. v. Regents of Univ. of Minn., 804 

F.2d 129, 134 (Fed. Cir. 1986)). Considering that the 

district court in this case maintained the stay and denied 

the preliminary injunction concurrently in a single order, 

those decisions are inextricably linked and we exercise 
6 MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 

our discretion to consider the district court’s stay decision 

along with its denial of a preliminary injunction. See id.

(“Because we have jurisdiction to review the effective 

denial of [appellant]’s motion for a preliminary injunction, 

we also have jurisdiction over the trial court’s decision to 

stay this case pending . . . proceedings before the PTO.”); 

Intermedics Infusaid, Inc., 804 F.2d at 134 (“Whether an 

appellate court exercises this ‘doctrine of pendent jurisdiction at the appellate level’ is a matter of discretion.”). 

I. Motion to Lift Stay

We first consider the district court’s denial of Murata’s motion to lift the stay with regard to the Additional 

Patents. We hold that the district court did not err in 

refusing to lift the stay entered in this case. 

The ability to stay cases is an exercise of a court’s inherent power to manage its own docket. See Procter & 

Gamble, 549 F.3d at 848–49 (citing Landis v. N. Am. Co., 

299 U.S. 248, 254–55 (1936)). Thus, we review the district court’s refusal to lift a stay pending IPR for an abuse 

of discretion. See id. at 845. 

A court may lift a stay if the circumstances supporting 

the stay have changed such that the stay is no longer 

appropriate. Canady v. Erbe Elektromedizin GmbH, 271 

F. Supp. 2d 64, 74 (D.D.C. 2002). District courts typically

analyze stays under a three-factor test: “(i) whether a 

stay would unduly prejudice or present a clear tactical 

disadvantage to the non-moving party; (ii) whether a stay 

will simplify the issues in question and trial of the case; 

and (iii) whether discovery is complete and whether a 

trial date has been set.” Nokia Corp. v. Apple Inc., No. 

C.A. 09-791, 2011 WL 2160904, at *1 (D. Del. June 1, 

2011) (quoting Xerox Corp. v. 3Com Corp., 69 F. Supp. 2d 

404, 406 (W.D.N.Y. 1999)). Murata’s principal argument 

is that the district court should have relied on this threefactor test and that it abused its discretion by considering

an additional, fourth factor—the burden of litigation on 
MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 7

the court and the parties—that Murata itself urged the 

court to adopt earlier in the case. In support of its position, Murata points out that Congress has specifically 

required district courts to apply the four-factor variant of 

the test—i.e., to include the “burden of litigation” factor as 

part of their analysis—for stay requests pending covered 

business method (“CBM”) review by the Board. See 

America Invents Act (“AIA”), Pub. L. No. 112-29, 

§ 18(b)(1), 125 Stat. 284, 331 (2011). Congress did not 

likewise prescribe a set of factors that district courts must 

consider when they decide whether to stay a case pending 

IPR. The inference Murata would have us draw is that 

the “burden of litigation” factor is “applicable solely to 

stays pending CBM review . . . .” Appellant Br. 48. Put 

another way, Murata argues that the CBM statute imputes a negative restriction on district courts, prohibiting

them from considering the burden of litigation unless 

Congress has explicitly required that they do so. Thus, 

Murata argues it was legal error for the district court to 

have considered the burden of litigation in this case as the 

stay centered around IPRs rather than CBM reviews. 

We disagree. Besides the fact that it was Murata that

first advocated that the court consider the “burden of 

litigation” factor, we nonetheless hold that consideration 

of this factor is well within the district court’s discretion. 

“The Supreme Court has long recognized that district 

courts have broad discretion to manage their dockets, 

including the power to grant a stay of proceedings.” 

Procter & Gamble, 549 F.3d at 848–49 (citing Landis, 299 

U.S. at 254–55); see also Gould v. Control Laser Corp., 705 

F.2d 1340, 1341 (Fed. Cir. 1983). Indeed, we have noted 

that with respect to a similar PTO post-grant proceeding, 

reexamination, the authorizing statute need not even 

grant district courts the power to stay related proceedings 

because “‘such power already resides with the Court’[,] . . . 

including the authority to order a stay pending conclusion 

of a PTO reexamination.” Ethicon, Inc. v. Quigg, 849 F.2d 
8 MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 

1422, 1426–27 (Fed. Cir. 1988) (quoting 1980 U.S. Code 

Cong. & Admin. News at 6463). 

Attendant to the district court’s inherent power to 

stay proceedings is the court’s discretionary prerogative to 

balance considerations beyond those captured by the 

three-factor stay test. The burden litigation places on the 

court and the parties when IPR proceedings loom is one 

such consideration that district courts may rightfully 

choose to weigh. See, e.g., NFC Tech. LLC v. HTC Am., 

Inc., No. 2:13-cv-1058, 2015 WL 1069111, at *5 (E.D. Tex. 

Mar. 11, 2015) (Bryson, J.) (noting that “whether a stay 

will reduce the burden of litigation on the parties and the 

court [] is a consideration that courts often take[] into 

account in determining whether to grant a stay pending 

inter partes review”). The AIA § 18(b)(1) requirement 

that district courts must consider the burden of litigation 

when faced with a CBM stay request does not bar courts 

from choosing to consider it in the IPR context. Indeed, 

legislative history confirms that “Congress’s desire to 

enhance the role of the PTO and limit the burden of 

litigation on courts and parties was not limited to the 

CBM review context.” Id. (citing AIA legislative history). 

As such, district courts might consider this factor relevant 

and therefore do not abuse their discretion by weighing it 

as part of an IPR-based stay determination. 

We have considered Murata’s remaining arguments 

that the district court abused its discretion in analyzing 

the traditional three factors and find them unpersuasive. 

Having determined that the district court did not abuse 

its discretion in its overall analysis or by considering the 

burden of litigation, we do not disturb the district court’s 

decision not to lift the stay with respect to the Additional 

Patents. 

II. Motion for Preliminary Injunction

After denying Murata’s motion to lift the stay, the 

district court found Murata’s preliminary injunction 
MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 9

motion untimely and concluded that, “[b]ecause the court 

has now declined to lift the stay, the Motion for Preliminary Injunction is denied without prejudice to renew at a 

later date, if appropriate.” Dist. Ct. Order, 2015 WL 

5178456, at *2. The district court included no additional 

discussion or rationale supporting its denial of Murata’s 

motion. Murata argues that the district court erred by 

summarily denying its motion for preliminary injunction. 

We agree, for the reasons stated below. 

In general, we review a grant or denial of a preliminary injunction using the law of the regional circuit, here 

the Tenth Circuit. Trebro Mfg., Inc. v. Firefly Equip., 

LLC, 748 F.3d 1159, 1165 (Fed. Cir. 2014). “However, the 

Federal Circuit has itself built a body of precedent applying the general preliminary injunction considerations to a 

large number of factually variant patent cases, and gives

dominant effect to Federal Circuit precedent insofar as it 

reflects considerations specific to patent issues.” Id. 

(quoting Mikohn Gaming Corp. v. Acres Gaming, Inc., 

165 F.3d 891, 894 (Fed. Cir. 1998) (internal quotation 

marks and alterations omitted)). Both the Tenth Circuit 

and the Federal Circuit review the denial of a preliminary 

injunction motion for an abuse of discretion. Little v. 

Jones, 607 F.3d 1245, 1250 (10th Cir. 2010); see also 

Procter & Gamble, 549 F.3d at 845. “A district court 

would necessarily abuse its discretion if it based its ruling 

on an erroneous view of the law or on a clearly erroneous 

assessment of the evidence.” Highmark Inc. v. Allcare 

Health Mgmt. Sys., Inc., 134 S. Ct. 1744, 1748 n.2 (2014)

(quoting Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 

405 (1990)). 

A preliminary injunction is a “drastic and extraordinary remedy” which, to obtain, a “moving party must 

demonstrate a reasonable likelihood of success on the 

merits, irreparable harm in the absence of a preliminary 

injunction, a balance of hardships tipping in its favor, and 

the injunction’s favorable impact on the public interest.” 
10 MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 

Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., 357 F.3d 1319, 

1324–25 (Fed. Cir. 2004) (internal citations omitted). 

Rule 52(a)(2) of the Federal Rules of Civil Procedure 

specifically requires that “[i]n granting or refusing an 

interlocutory injunction, the court must . . . state the 

findings and conclusions that support its action.” This 

rule reflects the exigency and gravity underlying a motion 

for preliminary injunction, as it departs from Federal 

Rule of Civil Procedure 52(a)(3)’s more general rule that

“[t]he court is not required to state findings or conclusions 

when ruling on a motion under Rule 12 or 56 or, unless 

these rules provide otherwise, on any other motion.” We 

take particular note, as have our sister circuits, that the

text of Rule 52 is drawn not only to a district court’s grant

of a preliminary injunction motion, but also to a denial. 

See, e.g., Ali v. Quarterman, 607 F.3d 1046, 1048 (5th Cir. 

2010) (“When denying a motion for a preliminary injunction, a district court must offer findings of fact and conclusions of law to justify the denial” under Federal Rule of 

Civil Procedure 52(a)(2). (emphasis added) (citing Fed. R. 

Civ. P. 52(a)(2))).

Here, the sum and substance of the district court’s 

decision regarding Murata’s preliminary injunction motion is found in a single paragraph, which concluded: 

“Because the court has now declined to lift the stay, the 

Motion for Preliminary Injunction is denied without 

prejudice to renew at a later date, if appropriate.” Dist. 

Ct. Order, 2015 WL 5178456, at *2. This cursory treatment of Murata’s preliminary injunction motion does not 

satisfy the Rule 52(a)(2) requirement that the deciding 

court must state factual findings and legal conclusions 

supporting its action. See Prairie Band of Potawatomi 

Indians v. Pierce, 253 F.3d 1234, 1246 (10th Cir. 2001)

(citing Knapp Shoes, Inc. v. Sylvania Shoe Mfg. Corp., 15 

F.3d 1222, 1228 (1st Cir. 1994)) (explaining that “conclusory findings are not sufficient compliance” with Federal 

Rule of Civil Procedure 52(a)(2)). While “[t]here are 
MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 11

times . . . when a district court’s failure to comply with 

Rule 52(a) will not necessitate a remand for clarification,” 

if, for example, it can be “ascertain[ed] from the record 

that one party or the other was clearly entitled to judgment in its favor,” this is not one of those instances. Id. 

Daifuku argues that the district court effectively considered the merits of Murata’s preliminary injunction motion 

when it concluded that a stay would not unduly prejudice 

Murata. See Oral Argument at 31:29–35:41. But the 

district court did not state as much in its opinion; nor did 

it suggest that this was its reasoning. In the absence of 

any analysis whatsoever, we cannot review the opinion for 

an abuse of discretion. See, e.g., H & R Block Tax Servs. 

LLC v. Acevedo-Lopez, 742 F.3d 1074, 1076 (8th Cir. 2014)

(vacating and remanding order denying preliminary 

injunction because “the district court’s failure to make 

specific findings and explain its ruling, as Fed. R. Civ. P. 

52(a)(2) requires, results in a record that does not sufficiently inform this court of the basis for the trial court’s 

decision on the material issue” (internal citation and 

quotation marks omitted)).

We hold that when a district court denies a preliminary injunction motion, it must provide an adequate 

reason for its decision beyond merely noting that the case 

has been stayed. In so holding, we maintain our view 

that “[a] preliminary injunction should not be granted if 

there is a substantial issue of patent validity.” Procter & 

Gamble, 549 F.3d at 849. Likewise, we recognize that 

“both a preliminary injunction and a stay ordinarily 

should not be granted at the same time.” Id. We do not 

ask, nor do the Federal Rules of Civil Procedure require, 

that the district court conduct a preliminary injunction 

hearing, or even request a responsive brief from Daifuku. 

See Bradley v. Pittsburgh Bd. of Educ., 910 F.2d 1172, 

1175 (3d Cir. 1990) (explaining that “[t]he applicable 

Federal Rule does not make a hearing a prerequisite for 

ruling on a preliminary injunction.”). Indeed, a “limited 
12 MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 

analysis may support a trial court’s denial of a preliminary injunction” so long as the district court concludes 

that some of the requisite preliminary injunction factors 

disfavor the movant. Polymer Techs., Inc. v. Bridwell, 103 

F.3d 970, 973–74 (Fed. Cir. 1996); see also Prairie Band, 

253 F.3d at 1246 (explaining that “Rule 52(a) does not 

require over-elaboration of detail or particularization of 

facts” so long as the findings are not “conclusory” (internal

citation and quotation marks omitted)). We simply ask 

that the district court explain its views on why a preliminary injunction would or would not be appropriate in this 

case. Bradley, 910 F.2d at 1178 (explaining that for 

preliminary injunctions, “conclusions of law are . . . essential” under Federal Rule of Civil Procedure 52(a)(2) and 

that even when there has been no hearing held, “the 

factual bases on which the conclusions are predicated . . . 

serve to permit evaluation of the legal conclusions 

reached by the district court”). Thus, we vacate the 

district court’s order to the extent it denies Murata’s 

motion for a preliminary injunction and we remand for 

further proceedings consistent with this opinion. See id.

at 1179 (“Because of the court’s failure to comply with 

Rule 52, we are unable to determine why the district 

court rejected a preliminary injunction on this aspect of 

[movant’s] claim. It follows that we must return this 

matter to the district court which should have the opportunity to make the requisite findings and conclusions.”); 

see also H & R Block, 742 F.3d at 1078; Ali, 607 F.3d at 

1048. 

CONCLUSION

For the foregoing reasons, we affirm the district 

court’s denial of Murata’s motion to lift the stay, vacate 

the district court’s denial of Murata’s motion for a preliminary injunction, and remand for the court to address the 

motion in light of this opinion.
MURATA MACHINERY USA, INC. v. DAIFUKU CO., LTD. 13

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED

COSTS

No costs.