Federal Circuit disposition — 25-105

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re INLINE PLASTICS CORP.,
Petitioner
______________________
2025-105
______________________
On Petition for Writ of Mandamus to the United States
District Court for the District of Massachusetts in No. 4:18-
cv-11631-MRG.
______________________
ON PETITION
______________________
Before P ROST , BRYSON , and HUGHES , Circuit Judges.
P ER CURIAM .
O R D E R
Petitioner Inline Plastics Corp. seeks a writ of manda-
mus to compel the district court to dismiss certain counter-
claims asserted by respondent Lacerta Group, Inc., in a
patent infringement action about to go to trial in the Dis-
trict of Massachusetts. Because Inline’s petition does not
satisfy the demanding standard required to justify the is-
suance of a writ of mandamus, we deny the petition.
Case: 25-105 Document: 4 Page: 1 Filed: 10/29/2024

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IN RE INLINE PLASTICS CORP . 2
I
Inline brought this suit against Lacerta alleging in-
fringement of five patents. Lacerta counterclaimed, seek-
ing a declaratory judgment of invalidity as to all five
patents. The district court granted summary judgment of
infringement as to one of the patents, and the jury ren-
dered a verdict of no infringement as to the other four pa-
tents. The jury also found that all the asserted claims from
all five patents were invalid.
On appeal, this court affirmed the non-infringement
portion of the jury’s verdict but remanded for a new trial
on the portion of the jury’s verdict finding all the asserted
claims invalid. The court also remanded for a determina-
tion of damages (if needed) on the single infringed patent
in the event that patent was not held invalid. Inline Plas-
tics Corp. v. Lacerta Grp., LLC, 97 F.4th 889, 903 (Fed. Cir.
2024).
On remand, Inline moved to dismiss as moot Lacerta’s
invalidity counterclaims as to the four patents that had
been adjudged non-infringed (“the noninfringed patents”).
In the alternative, Inline asked the court to bifurcate the
case so that the portion of the case involving the invalidity
and damages issues under the one patent for which the
court had granted summary judgment of infringement
would be tried to a jury, and the issue of the invalidity of
the noninfringed patents would be tried to the court. La-
certa opposed both requests.
As for the mootness argument, Lacerta pointed out
that Inline had not offered Lacerta a covenant not to assert
any of the noninfringed patents against other Lacerta
products. Those products, Lacerta pointed out, were sub-
ject to possible infringement claims based on alleged past
infringement, even though three of Inline’s noninfringed
patents were now expired and a fourth was set to expire
shortly. The district court ruled that under all the circum-
stances, including the possibility that some or all of the
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IN RE INLINE PLASTICS CORP . 3
four noninfringed patents could be asserted against other
Lacerta products based on infringement occurring while
those patents were in force, the invalidity issue as to those
four patents was not moot.
As for the bifurcation issue, Lacerta argued that it
should not be deprived of its right to a jury trial on its coun-
terclaims of invalidity regarding the noninfringed patents
simply because the infringement issues under those pa-
tents were now out of the case. Inline argued that because
Lacerta did not have a right to a jury trial as to the inva-
lidity counterclaims relating to the noninfringed patents,
the court was required to bifurcate the proceedings, con-
ducting a bench trial on the invalidity counterclaims di-
rected to the noninfringed patents and a jury trial on the
validity counterclaim directed to the remaining patent,
which had been held infringed.
That course of action was required, Inline argued, re-
gardless of the inefficiency of the process. See Appx241 (In-
line’s counsel: “I think you have to do that, your Honor,
because there isn’t a constitutional right to a jury as to
those four patents. It may not make sense from a practical
viewpoint.”). The court rejected counsel’s argument and
ruled that it was not barred from submitting the contested
invalidity counterclaims on the noninfringed counter-
claims to a jury. Trial in the case is scheduled to begin on
November 4, 2024.
II
Inline now petitions this court to grant a writ of man-
damus requiring the district court to dismiss Lacerta’s
counterclaims as to the noninfringed patents and to limit
the jury trial portion of the proceedings to the issue of in-
validity of the remaining patent on which the district court
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IN RE INLINE PLASTICS CORP . 4
has previously entered summary judgment of infringe-
ment.1
A
Mandamus is generally reserved for extraordinary cir-
cumstances, where the petitioner has no other adequate
means to attain the relief desired, petitioner’s right to issu-
ance of the writ is clear and indisputable, and the court is
satisfied that the writ is appropriate under the circum-
stances. Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367,
380–81 (2004). Inline has not met that demanding stand-
ard. At a minimum, it has failed to show why an appeal
after final judgment is an inadequate avenue for raising its
challenges to jurisdiction and to the court’s decision to con-
duct a jury trial with respect to all the invalidity claims in
the case. Nor has the petition shown “this case to present
special circumstances justifying mandamus review of cer-
tain basic, unsettled, recurring legal issues” that might
warrant mandamus relief, In re Micron Tech., Inc., 875
F.3d 1091, 1095 (Fed. Cir. 2017), or to ensure “proper judi-
cial administration,” Petition at 24 (citing La Buy v. Howes
Leather Co., 352 U.S. 249, 259–60 (1957)).
B
With respect to the mootness issue, the district court
noted that in light of the circumstances, and in particular
Inline’s failure to provide Lacerta with a covenant not to
sue on the four noninfringed patents, the invalidity coun-
terclaims as to those patents were not moot.2
1 The district court previously determined that it
would conduct a separate bench trial on the issue of ineq-
uitable conduct. There is no dispute regarding that aspect
of the court’s ruling.
2 Before the district court, counsel for Inline repeat-
edly emphasized that none of the remaining claims of the
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IN RE INLINE PLASTICS CORP . 5
The Supreme Court has stated that, as a general mat-
ter, “appellate affirmance of a judgment of noninfringe-
ment, eliminating any apprehension of suit, does not moot
a declaratory judgment counterclaim of patent invalidity.”
Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118, 132 n.11
(2007) (citing Cardinal Chem. Co. v. Morton Int’l, Inc., 508
U.S. 83, 98 (1993)); SSI Techs., LLC v. Dongguan Zheng-
yang Elec. Mech. LTD, 59 F.4th 1328, 1338 (Fed. Cir. 2023).
Mootness of an invalidity counterclaim can arise when a
judgment of noninfringement becomes final, but only if the
circumstances are such that the accused infringer is freed
from any non-speculative threat that the challenged patent
will be asserted against it in the future. See Revolution
Eyewear, Inc. v. Aspex Eyewear, Inc., 556 F.3d 1294, 1298
(Fed. Cir. 2009); Benitec Austl., Ltd. v. Nucleonics, Inc., 495
F.3d 1340, 1346 (Fed. Cir. 2007).
While Lacerta no longer faces claims of infringement
with respect to the products that were adjudged to be non-
infringing in the previous trial, Lacerta asserted in the dis-
trict court that it has numerous other products that could
be subject to claims of infringement under the four nonin-
fringed patents if those patents are not invalidated in the
remand proceedings. Appx178; Inline Plastics Corp. v. La-
certa Grp., Inc., No. 4:18-cv-11631, Dkt. No. 473, at 8 (Aug.
6, 2024). Although Inline emphasized that the jury’s ver-
dict resolved the issues of infringement with respect to all
the products that were before the court in the first trial,
Appx165–68, the district court noted that Inline had not
offered a covenant not to assert those four patents against
four noninfringed patents would be asserted in this case,
but counsel did not make a binding representation that
those patents would not be asserted against other Lacerta
products in the future.
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IN RE INLINE PLASTICS CORP . 6
products that were not at issue in the current action. Id.
at 168.3
In the Cardinal Chemical case, the Supreme Court
noted that although the initial burden of establishing the
trial court’s jurisdiction rests on the party invoking that
jurisdiction, “once that burden has been met courts are en-
titled to presume, absent further information, that juris-
diction continues. If a party to an appeal suggests that the
controversy has, since the rendering of judgment below, be-
come moot, that party bears the burden of coming forward
with the subsequent events that have produced that al-
leged result.” 508 U.S. at 98 (citation omitted). The Court
explained that “[a] company once charged with infringe-
ment must remain concerned about the risk of similar
charges if it develops and markets similar products in the
future.” Id. at 99–100.
That is the situation in which Lacerta finds itself. In
this case, it is indisputable that the district court initially
had jurisdiction over all of Lacerta’s counterclaims of inva-
lidity. The district court has in substance held that Inline
has not met its burden to show there is no longer a case or
controversy with respect to Lacerta’s invalidity counter-
claims on the four patents as to which the jury found no
infringement. For the foregoing reasons, Inline has not
shown that it has a clear and indisputable right to have
Lacerta’s invalidity claims as to those four patents dis-
missed.
3 Counsel for Lacerta noted that Inline’s counsel had
argued that any future infringement claims “might be
claim precluded, that there might be a claim splitting is-
sue,” but that Inline’s representations “are not equal to a
covenant not to sue.” Appx178. Lacerta’s counsel acknowl-
edged that a “proper covenant not to sue could divest this
Court of jurisdiction over our invalidity counterclaim.” Id.
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IN RE INLINE PLASTICS CORP . 7
C
With respect to the jury trial issue, the court exercised
its discretion to submit to the jury the invalidity counter-
claims that relate to the noninfringed patents. Although
Inline argued to the district court that the court was re-
quired to bifurcate the trial because Lacerta has no consti-
tutional right to a jury trial on those claims, Lacerta’s
rights are not the issue. Instead, Inline’s argument is im-
plicitly premised on a contention that it has a right to a
bench trial on the invalidity issues (other than the one that
is tied to the remaining infringement claim).
It is well established, however, that there is no consti-
tutional right to a bench trial in either a civil or criminal
case. See Beacon Theatres, Inc. v. Westover, 359 U.S. 500,
510–11 (1959); Singer v. United States, 380 U.S. 24, 35
(1965); see also Fitzgerald v. U. S. Lines Co., 374 U.S. 16,
20 (1963).4 The district court was therefore free to exercise
its discretion to rule that the counterclaims of invalidity as
to the noninfringed patents will be tried to the same jury
that will hear the counterclaims of invalidity as to the pa-
tent for which the court has entered summary judgment of
infringement.
D
Finally, Inline argues repeatedly throughout its peti-
tion (see Petition at 4, 10, 18, 24, 25) that by allowing the
invalidity counterclaims that relate to the noninfringed pa-
tents to be heard by the jury, the district court has violated
this court’s mandate in the initial appeal in this case,
where this court directed the district court to determine on
remand “how particular issues are properly allocated
4 Congress has granted a statutory right to a bench
trial in limited circumstances, see, e.g., Gould v. Aerospa-
tiale Helicopter Corp., 40 F.3d 1033, 1034–35 (9th Cir.
1994), but it has not done so in patent cases.
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IN RE INLINE PLASTICS CORP . 8
between judge and jury.” Inline Plastics Corp., 97 F.4th at
900.
That contention is frivolous. The appellate court’s ob-
servation about allocating issues between judge and jury
was made in the context of an argument by Inline that the
district court should not have instructed the jury on certain
aspects of Lacerta’s written-description and enablement
grounds for asserting invalidity. The court of appeals
noted that Inline’s argument rested on the principle that
trial courts should not instruct on a “legal abstraction that
is not applicable to the facts of the case or that would sub-
mit to the jury a matter that the court should determine
for itself.” 97 F.4th at 899 (quoting 9C Charles Alan
Wright & Arthur R. Miller, Federal Practice & Procedure
§ 2552 (3d ed. Apr. 2023 update)). The context of the
court’s comment makes it clear that the court was address-
ing what instructions should be given to the jury on re-
mand, not whether the jury should be allowed to hear
claims of invalidity that are not tied to pending infringe-
ment claims.
Accordingly,
I T I S O RDERED T HAT :
The petition is denied.
October 29, 2024
Date
F OR THE COURT
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