Jens Erik Sorensen, As Trustee of Sorensen Research and Development Trust v. Lexar Media, Inc.

# NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit

JENS ERIK SORENSEN,
AS TRUSTEE OF SORENSEN RESEARCH AND
DEVELOPMENT TRUST,
Plaintiff-Appellant,
v.
LEXAR MEDIA, INC.,
Defendant-Appellee,
and
PHILLIPS PLASTICS CORPORATION,
Defendant-Appellee.

2011-1125

Appeal from the United States District Court for the
Northern District of California in case no. 08-CV-0095,
Judge James Ware.

ON MOTION

Before PROST, MAYER, and MOORE, Circuit Judges.
MOORE, Circuit Judge.

ORDER

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Lexar Media, Inc. (Lexar) moves to dismiss Jen Erik
Sorensen's appeal for lack of jurisdiction. Sorensen moves
for an extension of time to file an opposition and opposes
the motion to dismiss.

Sorensen sued Lexar in the United States District
Court for the Northern District of California alleging
patent infringement. The patent expired in February of
2008, shortly after Sorenson filed the suit. In February
2009, the district court stayed proceedings in this case
pending the Patent and Trademark Office's reexamina-
tion of the patent. On January 8, 2010, in a final office
action, the PTO determined that all of Sorensen's patent
claims asserted against Lexar were not patentable. In
April 2010, Sorensen appealed the PTO's final rejection to
the Board of Patent Appeals and Interferences. Thereaf-
ter, the district court denied Sorensen's motion to lift the
stay of proceedings in the case. The district court noted
that the denial of Sorenson's motion was without preju-
dice to Sorenson renewing the motion on or after May 2,
2011. Sorensen filed a notice of appeal of the order deny-
ing his motion to lift the stay, asserting that the district
court violated his rights to due process and equal protec-
tion. Lexar moves to dismiss the appeal, asserting that
the stay order is not an immediately appealable order.

As a general rule, an order staying a case pending re-
examination is not subject to immediate appeal. Slip
Track Sys., Inc. v. Metal Lite, Inc., 159 F.3d 1337, 1340
(Fed. Cir. 1998); Gould v. Control Laser Corp., 705 F.2d
1340, 1341 (Fed. Cir. 1983). One narrow exception allows
an immediate appeal if the stay order effectively puts the
appellant out of court because no court would review an
issue following the stay. Slip Track, 159 F.3d at 1340.
For example, in Slip Track we allowed an immediate
appeal when after the PTO reexamination proceedings
concluded it was possible that the appellants would be

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unable to raise the issue of priority of invention in the any
forum. Id.

In this case, the appellant has not shown that any is-
sue will evade review by a federal court, due to the stay of
proceedings pending reexamination. As we noted in
Gould, "[d]istrict court and PTO decisions on the merits
are both reviewable by this court." Gould, 705 F.2d at
1342. Sorenson argues that the issue whether the stay
was proper would become moot if this court dismisses the
appeal for lack of jurisdiction. Of course, this may be true
of a large variety of nonfinal orders that parties would try
to appeal, but that does not create jurisdiction to review
the nonfinal orders.

Accordingly,

IT IS ORDERED THAT:

(1) The motion to dismiss is granted. The appeal is
dismissed.

(2) The motion for an extension of time to file an op-
position to the motion to dismiss is granted.

(3) Each side shall bear its own costs.

FOR THE COURT

MAR 0 4 2011

/s/ Jan Horbaly

Date

Jan Horbaly

Clerk

cc: Melody A. Kramer, Esq. Jared Bobrow, Esq. Kimberly K. Dodd, Esq.

$20

ISSUED AS A MANDATE:

MAR 0 4 2011

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
MAR 04 2011

JAN HORBALY
CLERK