N OTE : This o rder is nonprecedential.


# United States **Court of Appeals**  **for the Federal Circuit**

______________________

IN RE HO KEUNG TSE,
Petitioner.

______________________

2013

- 168

______________________

On Petition for Writ of Mandamus to the United
States District Court for the Northern District of Califo rnia in No. 06

- CV

- 6573, Judge Saundra Brown Armstrong.

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ON PETITION

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Before O’ M ALLEY

, L INN and W ALLACH

, Circuit Judges

.
P ER C URIAM

. O R D E R

Petitioner Ho Keung Tse (“Tse ”) , the plaintiff in the underlying patent infringement action, seeks a writ of
mandamus to , inter alia, direct the United State s District Court for the Northern District of California to lift the stay of proceedings and commence discovery

. Respon dents Apple Inc. et al., the defendants in this case, oppose the petition

. Tse also moves to take judicial notice of
certain documents.

In October 2007, the district court stayed proceedings in light of the United States Patent and Trademark Case: 13-168 Document: 30 Page: 1 Filed: 01/31/2014IN RE TSE 2

Office ’s (“ USPTO ”) decision to institute an ex parte ree xamination of the patent

- in

- suit. The record states that during those reexamination proceedings Tse submitted at least fourteen filings to the USPTO that, among other things, amended claims and added new claim 23. In January 2011, the Board of Patent Appeals and Interfe rences (“ Board ”) sustained the patent examiner’s rejection
of a number of claims but reversed the examiner ’s reject ion of several claims, including claim 23 of the patent

- in

sui t

. A fter receiving the USPTO’s reexamination certificate

, Tse served his new infringement contentions on respondents, including allegations of infringement of newly added claim 23. Tse also informed the district
court of the new certificate and moved to lift the stay

. In September 2013, t he district court denied Tse’s motion. The district court found that there were discrepancies
between the USPTO’s reexamin ation certificate and Tse’s version of claim 23 as recited in the appendix of his a ppeal filed with the Board and noted that there appeared to be language missing in the certificate’s version of claim

23. Because the difference between the two version s of
claim 23 was “ substantive rather than merely typograp hical, ” the district court concluded that continuing the stay until the USPTO clarifies the scope of claim 23 would simplify the litigation, and thus denied the motion to li f t the stay

. Although he does not suggest that the USPTO’s certi fi cate is currently correct

, Tse now seeks a writ of mand amus to direct the district court to lift the stay of proceedings. The decision to stay litigation is one co mmitted to the sound discretion of the trial court

. See Gould v. Control Laser Corp. , 705 F.2d 1340, 1341 (Fed.
Cir. 1983); see also Landis v. North Am. Co. , 299 U.S. 248,

254

– 55 (1936). O n mandamus review our role is not to second- guess the trial court’ s decision to stay; instead, we look only to see w hether a “rational and substantive legal Case: 13-168 Document: 30 Page: 2 Filed: 01/31/2014IN RE TSE 3

argument can be made in support of the rule in que stion[ .]” In re Cordis Corp. , 769 F.2d 733, 737 (Fed. Cir. 1985); see also Bankers Life & Cas. Co. v. Holland , 346 U.S. 379, 383 (1953) (M andamus is appropriate only if
there is a “clear abuse of discretion

. ”).

When measured against this exacting standard, Tse
has no t shown entitlement to relief. Under the circu mstances, it was plausible for the district court to conclude
that continuing the stay until after a certificate of corre ction issued would reduce the potential risk for unnece ssary cos ts and inefficiencies during discovery, infringement and invalidity contentions, and claim co nstruction stages of the litigation. See Landis , 299 U.S. at 254 (D istrict cou rts have authority to “control the dispos ition of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants.”).

Moreover, the delay in lifting the stay here is fairly
attributable to Tse himself , as he can reque st a corrected certificate that would promptly eliminate the need for the stay of proceedings. See 35 U.S.C. §254 ; Manual of Patent Examining Procedure § 1480.01 (“Whe re the correction requested was incurred through the fault of the [USPTO], and the matter is clearly disclosed in the records of the [USPTO], and is accompanied by documentation that unequivocally supports the patentee’s assertion(s), a
Certificate of Correc tion will be expeditiously issued.”).

In sum, this court does not discern a clear ab use of
discretion in the district court’s decision to continue the stay of proceedings. Because this court rejects Tse’s primary assertion of error, this court lik ewise denies his requests to commence discover y and reassign the case to a different district judge

, as Tse has not shown a clear and indisputable right to such relief.

Accordingly,

I T I S O RDERED T HAT : Case: 13-168 Document: 30 Page: 3 Filed: 01/31/2014IN RE TSE 4

(1) The petition is denied.

(2) Tse’s motio n to take judicial notice and motion to file a reply in support of that motion are granted

.

F OR THE C OURT

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

cc: Clerk, United States District Court for the Northern District of California

s26 Case: 13-168 Document: 30 Page: 4 Filed: 01/31/2014