Anza Technology, Inc. v. Mushkin, Inc.
934 F.3d 1359
| Fed. Cir. | 2019Background
- Anza sued Mushkin for patent infringement, originally asserting claims of U.S. Patent No. 7,124,927 (’927) involving flip‑chip bonding tools; case later transferred to D. Colo.
- After discovery/mediation revealed Mushkin purchased pre‑bonded modules, Anza conceded some original claims were nonviable and filed a second amended complaint substituting two different patents (’479 and ’864) that claim dissipative bonding tips (wire‑bonding focus) and asserting § 271(g) method claims; also altered the accused‑product list (omitted 10 products, added 2 new ones).
- Mushkin moved to dismiss, arguing the new patent claims did not “relate back” under Fed. R. Civ. P. 15(c)(1)(B) to the original complaint date and therefore were time‑barred by the six‑year patent limitations statute, 35 U.S.C. § 286.
- The district court held the new claims did not relate back because they involved different bonding techniques (flip‑chip vs. wire bonding), different accused products, and would require different evidence; it dismissed the second amended complaint as time‑barred.
- On appeal the Federal Circuit held relation‑back issues in patent cases are governed by Federal Circuit law and reviewed de novo (with clear‑error review for material factual findings), emphasizing a notice‑based, liberal Rule 15(c) approach focused on whether the original pleading’s operative facts put the defendant on notice of the new claims.
- The Federal Circuit concluded the amended claims relating to six products that were accused in both complaints (Redline, Blackline, Radioactive, Silverline, Proline, Essentials) relate back; claims concerning the two newly accused products (Ridgeback, Apple) were vacated and remanded for fact‑specific analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether relation back under Fed. R. Civ. P. 15(c) for newly asserted patents is governed by Federal Circuit law | Anza assumed standard patent‑law analysis should control | Mushkin did not dispute Federal Circuit authority but argued restrictive relation‑back application | Federal Circuit law governs relation‑back questions in patent cases |
| Standard of review for district court’s relation‑back ruling | De novo review because dismissal flowed from relation‑back ruling | Mushkin urged abuse‑of‑discretion review | De novo review for legal application; clear‑error for material factual findings |
| Whether amended claims (different patents/techniques) relate back to original complaint | Claims share same problem/solution (ESD mitigation via dissipative tips); overlapping accused products; original complaint gave notice | Different bonding techniques (flip‑chip vs wire bonding), different products, different theories/statutory bases; would require different evidence | For six overlapping products, claims relate back (notice‑based, liberal Rule 15(c) approach); for two newly accused products, remand for fact‑specific determination |
| Effect of relation‑back determination on § 286 statute of limitations | If relation back applies, damages not wholly barred | If not, § 286 bars damages beyond six years before amendment filing | Relation back restored the ability to recover for the six overlapping products; time‑bar status for two added products remanded |
Key Cases Cited
- O2 Micro Int’l Ltd. v. Monolithic Power Sys., 467 F.3d 1355 (Fed. Cir.) (procedural patent issues may be governed by Federal Circuit law)
- In re EMC Corp., 677 F.3d 1351 (Fed. Cir.) (logical‑relationship test and factors for transaction/occurrence analysis in patent cases)
- Tiller v. Atl. Coast Line R.R. Co., 323 U.S. 574 (Sup. Ct.) (liberal relation‑back doctrine where amended claim arises from same general conduct)
- Korody‑Colyer Corp. v. Gen. Motors Corp., 828 F.2d 1572 (Fed. Cir.) (Rule 15(c) relation‑back requires adequate notice in earlier complaint)
- Snoqualmie Tribe of Indians v. United States, 372 F.2d 951 (Ct. Cl.) (notice‑based, liberal interpretation of Rule 15(c))