Murata MacHinery USA, Inc. v. Daifuku Co., Ltd.
830 F.3d 1357
| Fed. Cir. | 2016Background
- Murata sued Daifuku in the D. Utah for infringement of three patents (Original Patents) and later amended to add two more (Additional Patents).
- Daifuku filed IPR petitions against the Original Patents and moved to stay the district action; the district court stayed the entire case and allowed Murata to amend to add the Additional Patents.
- After the PTAB instituted IPRs on the Original Patents, Murata moved to lift the stay as to the Additional Patents and, separately, sought a preliminary injunction for those Additional Patents.
- The district court denied Murata’s motion to lift the stay (applying a four-factor test that included the litigation‑burden factor) and summarily denied the preliminary injunction as untimely and because the stay remained in place.
- On appeal the Federal Circuit exercised pendent jurisdiction over the stay denial because it was tied to the effective denial of the preliminary injunction; it affirmed the stay denial but vacated and remanded the injunction denial for failure to comply with Fed. R. Civ. P. 52(a)(2).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court abused discretion by considering a "burden of litigation" factor in deciding to keep the stay pending IPR | Murata: District court should apply only the traditional three‑factor stay test for IPRs and not the additional burden factor (which Congress required only for CBM stays) | Daifuku: District court may consider litigation burden; Murata itself previously urged the court to consider that factor | Court: No abuse of discretion—district courts may weigh litigation burden when managing their dockets and stays pending IPRs; affirmed stay |
| Whether the district court erred in denying Murata’s preliminary injunction without detailed findings | Murata: District court summarily denied the injunction without stating findings/conclusions required by Rule 52(a)(2) | Daifuku: Denial of stay showed consideration of prejudice and thus effectively decided the injunction issue | Court: Rejected Daifuku’s position—district court’s single‑sentence denial lacked the requisite factual findings and legal conclusions; vacated and remanded for proper Rule 52(a)(2) findings |
Key Cases Cited
- Procter & Gamble Co. v. Kraft Foods Glob., Inc., 549 F.3d 842 (Fed. Cir. 2008) (interlocutory jurisdiction over effective denial of a preliminary injunction and guidance on stays vs. injunctions)
- Landis v. North American Co., 299 U.S. 248 (U.S. 1936) (district courts’ inherent docket‑management power to stay proceedings)
- Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S. 271 (U.S. 1988) (final‑judgment rule limits immediate appealability of stay orders)
- Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) (district courts’ authority to stay proceedings pending PTO reexamination)
- Prairie Band of Potawatomi Indians v. Pierce, 253 F.3d 1234 (10th Cir. 2001) (Rule 52(a) requires non‑conclusory findings; remand when record does not show the basis for decision)
- Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (U.S. 2014) (abuse‑of‑discretion standard and that such abuse includes rulings based on erroneous legal views)