Federal Circuit disposition — 2009-m895-5-5-09-1-pdf

NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
MISCELLANEOUS DOCKET NO. 895
IN RE CLASSIC INDUSTRIES, LP, CLASSIC INDUSTRIES, INC., CLASSIC
ARCHITECTURAL PRODUCTS, LP, CLASSIC CAPITAL MANAGEMENT, LLC, RLW
GP MANAGEMENT, LLC SKW GP MANAGEMENT, LLC and RICKEY L. WILSON
(also known as Rick Wilson),
Petitioners.
On Petition for Writ of Mandamus to the United States District Court for the Southern
District of Texas in case no. 4:08-CV-01309, Judge Gray H. Miller.
ON PETITION FOR WRIT OF MANDAMUS
Before GAJARSA, FRIEDMAN, and LINN, Circuit Judges.
LINN Circuit Judge.
ORDER
Classic Industries, LP et al. (Classic) petition for a writ of mandamus to direct the
United States District Court for the Southern District of Texas to vacate its orders
denying Classic's motion to dismiss the complaint. Shell Oil Products Company, LLC
and Motiva Enterprises, LLC (Shell) oppose.
The genesis of this declaratory judgment action lies in Shell's efforts to equip
service station canopies with the unique identifier of a red and yellow, curved, fascia
motif. In 2002, Shell contracted with Classic to manufacture the component parts of the
fascia design. The parties dispute several facts leading up to their 2002 agreement,
including who initially came up with the design for the motif. However, it is undisputed
that prior to their agreement, Classic filed four patent applications for an ornamental
design covering components of the curved fascia motif known as the "Lazy S" design.

-- 1 of 4 --

The four patents issued shortly after the parties 2002 agreement. The parties
subsequently agreed to continue their relationship through the fall of 2007.
Early in 2007, Shell approached three potential alternative suppliers.
Architectural Graphics, Inc. (AGI) was one of those suppliers. AGI and Shell began
discussions on a supply agreement, but negotiations stalled when AGI informed Shell
that without the original design drawings and specifications Shell would have to pay
additional redevelopment costs. AGI also brought to Shell's attention, apparently for
the first time, the existence of Classic's four design patents. AGI notified Shell that any
agreement between Shell and AGI would require a provision indemnifying AGI in the
event it was sued by Classic for patent infringement.
Without an agreement with AGI, Shell began negotiating a contract extension
with Classic. During a meeting in November 2007, Shell confronted Classic about the
patents and apparently mentioned the possibility of using an alternative supplier for the
fascia components. Shell alleges that Classic responded that 141 any vendor would
have to do is pay Classic a license fee to sell Lazy S."
The parties ultimately agreed to extend the agreement until February 29, 2008,
at which time the relationship terminated. On April 29, 2008, Shell filed a complaint
seeking, inter alia, a declaration that Classic's design patents were invalid and
unenforceable, as well as claims for conversion, unfair competition, breach of contract,
unjust enrichment, conversion, theft, fraud, and misappropriation of trade secrets.
Classic moved to dismiss the complaint, contending that there was not a sufficient
Shell alleges in its papers here and below that it turned over the original
specifications and drawings to Classic prior to their 2002 agreement and that Classic
refused to return the materials upon Shell's repeated requests.
Misc. 895 2

-- 2 of 4 --

judiciable controversy at issue between the parties because Classic has never
threatened to bring an infringement claim against Shell. The district court denied
Classic's motion. The district court found that Shell's prior discussions with AGI and
Classic's November 2007 statement that any vendor would have to pay Classic a
license fee were sufficient to establish jurisdiction over the declaratory judgment action.
The writ of mandamus is available 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. 1998). A party seeking a writ bears the burden of proving that it has no
other means of obtaining 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 Chem. 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 Gordis 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"). "That a petitioner may suffer hardship, inconvenience,
or an unusually complex trial does not provide a basis for a court to grant mandamus."
In re Roche Molecular Svs., Inc. 516 F.3d 1003, 1004 (Fed. Cir. 2008) (citing United
States v. Watson 603 F.2d 192, 195 (C.C.P.A. 1979)).
Classic contends that the district court clearly abused its discretion by
determining jurisdiction based upon the statement that any vendor would have to pay
Classic a license. Under the general standard set forth by the Supreme Court in
Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), a declaratory action is
available when the facts as alleged, "'under all the circumstances, show that there is a
Misc. 895 3

-- 3 of 4 --

Jan Horbaly
Clerk
US. SO
s19
Date
cc: Jeffrey S. Lowenstein, Esq.
Paul C. Van Slyke, Esq.
THE VigLVSIERVIT"
MAY 5 2009
liüRbitY
CLERK
substantial controversy, between the parties having adverse legal interests, of sufficient
immediacy and reality to warrant' relief' (quoting Maryland Casualty Co. v. Pacific Coal
& Oil Co., 312 U.S. 270, 273 (1941)).
In the papers submitted, Classic has not met its heavy burden to show a clear
abuse of discretion. Classic has also not shown why it cannot raise any challenge to
the district court's determination after an appeal from a final judgment.
Accordingly,
IT IS ORDERED THAT:
Classic's petition for a writ of mandamus is denied.
FOR THE COURT
MAY - 5 2009 /s/ Jan Horbaly
Misc. 895 4

-- 4 of 4 --