Miscellaneous Docket No. 898 IN RE CYPRESS SEMICONDUCTOR CORPORATION v. Atmel -- 1 of 6 -- Corp., No. 02-864 E.D. Pa. Atmel . In Atmel, the district court…

NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
Miscellaneous Docket No. 898
IN RE CYPRESS SEMICONDUCTOR CORPORATION,
Petitioner.
On Writ of Mandamus from the United States International Trade Commission
in case no. 337-TA-648.
ON PETITION FOR WRIT OF MANDAMUS
Before NEWMAN, BRYSON, and DYK Circuit Judges.
DYK, Circuit Judge.
ORDER
Cypress Semiconductor Corporation petitions for a writ of mandamus directing
the United States International Trade Commission (Commission) to halt its investigation
in case no. 337-TA-648. Responses in support of the petition were received from
(1) Elpida Memory Inc., (2) Nanya Technology Corporation, Powerchip Semiconductor
Corporation, and Spansion Inc., (3) Grace Semiconductor Manufacturing Corporation,
Integrated Device Technology, Inc. and STMicroelectronics N.V., (4) United
Microelectronics Corporation, ProMOS Technologies, Inc., Microchip Technology Inc.,
Micronas GmbH, and Dongbu HiTek Semiconductor Business, (5) MagnaChip
Semiconductor, Ltd., and (6) National Semiconductor Corporation. Agere Systems Inc.
and LSI Corporation (Agere) and the Commission each oppose the petition.
Cypress is a respondent in case no. 337-TA-648 concerning Agere's patent.
Agere's patent was previously the subject of patent infringement litigation in the United
States District Court for the Eastern District of Pennsylvania. Mere Sys., Inc. v. Atmel

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Corp., No. 02-864 (E.D. Pa.) (Atmel). In Atmel, the district court ruled the patent invalid.
After judgment was entered, the parties settled their dispute and, on motion, the district
court vacated its summary judgment orders, the jury verdict, and the judgment.
Agere subsequently submitted a complaint to the Commission alleging that
various respondents infringe its patent through importation and sale of certain
semiconductor integrated circuits using tungsten metallization, and the Commission
initiated an investigation. Cypress filed a motion for summary determination arguing
that Agere is precluded from relitigating the validity of the patent based on the Eastern
District of Pennsylvania's rulings in Atmel. The administrative law judge (AU) denied
the motion, and the Commission affirmed the AU's ruling that the Atmel judgment did
not preclude Agere from relitigating the patent's validity. Cypress now seeks a petition
for a writ of mandamus directing the Commission to halt its proceedings.
The remedy of mandamus is available only in extraordinary situations to correct a
clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc. 854 F.2d 461,
464 (Fed. Cir. 1988). A party seeking a writ bears the burden of proving that it has no
other means of attaining the relief desired, Mallard v. U. S. Dist. Court for S. Dist. of Iowa
490 U.S. 296, 309 (1989), and that the right to issuance of the writ is "clear and
indisputable," Allied Chemical Corp. v. Daiflon Inc. 449 U.S. 33, 35 (1980). A court may
deny mandamus relief "even though on normal appeal, a court might find reversible error."
In re Cordis Corp. 769 F.2d 733, 737 (Fed. Cir. 1985); see also United States v. Watson
603 F.2d 192, 196-97 (C.C.P.A. 1979) ("the writ will not issue to cure the mere
commission of reversible error").
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Cypress argues that the vacated invalidity judgment in Atmel precludes Agere
from asserting the patent in the Commission investigation and, thus, this court should
direct the Commission to terminate the investigation. Cypress argues that a writ is
warranted to protect Cypress and the other respondents from the expense and
inconvenience of discovery and a trial in the Commission proceeding.
The parties assert that this dispute centers on whether the preclusion question is
governed by Federal Circuit law or Third Circuit law. Cypress argues that Third Circuit
law should govern because the Atmel judgment was issued by the Eastern District of
Pennsylvania, which is within the Third Circuit. Cypress cites the decision of the United
States Court of Appeals for the Eighth Circuit in Canadv v. Allstate Ins. Co. 282 F.3d
1005, 1014-15 (8th Cir. 2002), in which the Eighth Circuit stated that "the res judicata
effect of the first forum's judgment is determined by the first forum's law, not by the law
of the second forum." Cypress argues that pursuant to the Third Circuit's decision in
Sentinel Trust Co. v. Universal Bonding Ins. Co., 316 F.3d 213 (3d Cir. 2003), the court
should rule that the vacated judgment in Atmel retains preclusive effect and prevents
Agere from asserting its patent in the Commission proceedings.
Agere argues that Federal Circuit law should govern because the question is not
whether the Eastern District of Pennsylvania correctly vacated the judgment in Atmel;
instead, the question is whether the Commission should give preclusive effect to that
judgment. The Commission argues that Federal Circuit law should govern because the
controlling law on procedural matters such as preclusion is that of the circuit to which an
appeal would normally lie. The Commission argues that because this court has
exclusive jurisdiction over appeals of Commission decisions, in this case any appeal
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would normally lie in the Federal Circuit and thus Federal Circuit law applies. Agere
and the Commission argue that pursuant to this court's decision in Rumsfeld v.
Freedom, NY, Inc. 329 F.3d 1320, 1332 (Fed. Cir. 2003), Federal Circuit law provides
that a vacated judgment has no preclusive effect.
Because any appeal of the Commission's final determination would be within this
court's exclusive jurisdiction, we apply Federal Circuit law to the res judicata issue.
Canady is not to the contrary. In Canadv, the parties disputed whether the law of the
forum in which the case was originally brought — the state of Missouri — or the law of the
forum to which the case was removed — federal — governed the res judicata question.
In contrast, in this case there is only one forum — federal. Both the Atmel litigation and
the Commission proceedings are governed by federal law; thus, federal law governs the
preclusion issue. See generally Blonder-Tongue Labs, Inc. v. University of III. Found.,
402 U.S. 313, 324 n.12 (1971) ("In federal-question cases, the law applied is federal
law") . Apparel Art Intl, Inc. v. Amertex Enter. Ltd., 48 F.3d 576, 583 n.7 (1st Cir. 1995)
("[F]ederal law governs the res judicata effects of a federal court judgment in a prior
federal question case on a subsequent case that presents a federal question to a
federal court"). Commission proceedings generally are governed by Federal Circuit law.
See Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1574-75 (Fed.Cir.1984)
(noting that this court may follow existing law or create new law "regarding any and all
matters in cases where this court has exclusive jurisdiction over all appeals from a
particular court"), overruled on other grounds by Richardson-Merrell Inc. v. Koller, 472
U.S. 424, 105 S.Ct. 2757, 86 L.Ed.2d 340 (1985). We conclude that Federal Circuit law
governs the preclusion issue.
Misc. 898 4

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Cypress argues in the alternative that if the court determines that Federal Circuit
law governs, the court should rule that the vacated judgment retains collateral estoppel
effect and precludes Agere from asserting the patent in the Commission proceedings.
Generally, vacatur of a judgment "clears the path for future relitigation of the issues
between the parties and eliminates a judgment." United States v. Munsingwear, 340
U.S. 36,40 (1950); see also Freedom NY, 329 F.3d at 1332 ("[A] vacated judgment has
no preclusive force either as a matter of collateral or direct estoppel or as a matter of
the law of the case") (citations omitted). While we are skeptical of Cypress's contention
that the vacated judgment in Atmel could bar Agere from asserting its patent in the
Commission proceedings, we do not decide that issue at this time. To decide the
question presented by this mandamus petition, we need only decide whether Cypress
has shown that the Commission clearly and indisputably erred in ruling that the
Commission may proceed with its investigation. We determine that Cypress has not
met its burden and thus deny the petition.
Accordingly,
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT
APR 2 2009 /s/ Jan Horbalv
Date
cc: Thomas L. Halkowski, Esq.
David E. Sipiora, Esq.
Sturgis M. Sobin, Esq.
George E. Badenoch, Esq.
Jan Horbaly
Clerk ILED
us. COURT
F
OF APPEALS FOR
THE FEDERAL CIRCUIT
APR 0 2 2009
JIth Anon Li
CLERK
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Michael D. Esch, Esq.
Keith L. Slenkovich, Esq.
Clint A. Gerdine, Esq.
Gary A. Hecker, Esq.
Mark Fowler, Esq.
Michael J. Bettinger, Esq.
Brian Edward Ferguson, Esq.
James L. Quarles, Esq.
s17
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