Case: 21-153 Document: 10 Page: 1 Filed: 09/09/2021

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

In re: DMF, INC., a California corporation, Petitioner ______________________

2021-153 ______________________

On Petition for Writ of Mandamus to the United States District Court for the Central District of California in No. 2:18-cv-07090-CAS-GJS, Senior Judge Christina A. Snyder. ______________________

ON PETITION ______________________

Before LOURIE, BRYSON, and TARANTO, Circuit Judges. PER CURIAM. ORDER DMF, Inc. petitions for a writ of mandamus challeng- ing the district court’s ruling that AMP Plus, Inc., dba ELCO Lighting (“ELCO”) was not statutorily estopped from raising a particular ground of invalidity. ELCO op- poses. DMF replies. This petition concerns the scope of statutory estoppel under 35 U.S.C. § 315(e)(2). A petitioner in an inter partes review may request to cancel as unpatentable one or more claims of a patent only “on the basis of prior art consisting Case: 21-153 Document: 10 Page: 2 Filed: 09/09/2021

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of patents or printed publications.” 35 U.S.C. § 311(b). Sec- tion 315(e)(2) provides that the “petitioner in an inter partes review of a claim in a patent . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” DMF is the owner of U.S. Patent No. 9,964,266 (“the ’266 patent”) directed to certain compact recessed lighting products. In August 2018, DMF filed this suit in the United States District Court for the Central District of Cal- ifornia, alleging ELCO infringes various claims of the ’266 patent. ELCO raised several invalidity grounds, including arguments premised on a boating light product sold under the name Hatteras that had been featured in a product cat- alog published in 2011 by Imtra Marine Lighting. In May 2019, ELCO petitioned for inter partes review of the ’266 patent. The Patent Trial and Appeal Board in- stituted review of all the challenged claims on three grounds based on the Imtra 2011 catalog either alone or in combination with other references. In its final written de- cision, the Board held that ELCO had not proved that all the challenged claims were unpatentable. Following the Board’s decision, DMF moved the district court under § 315(e)(2) to bar ELCO from asserting invalidity in the lit- igation based on the Hatteras product itself. The parties agreed that section 315(e)(2) estoppel was to be assessed based on whether there was a substantive difference between the physical Hatteras product relied upon by ELCO in this case and the description of the prod- uct in the 2011 Imtra catalog germane to the invalidity dis- pute. See Appx6; Appx112 (DMF’s reply brief in support of motion) (“The parties appear to agree that courts in this District and elsewhere require that—as stated in ELCO’s own Opp. at 7—there be some substantive difference be- tween the product and the printed prior art that is germane Case: 21-153 Document: 10 Page: 3 Filed: 09/09/2021

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to the invalidity dispute at hand” (internal quotation marks and emphasis omitted)). Applying that standard, the district court denied the motion. Relying on DMF’s own prior argument that the Imtra reference could not anticipate the claims because ELCO’s invalidity contentions mixed and matched compo- nents from various products disclosed in the catalog, the district court found that anticipation arguments based solely on the Hatteras product were substantively, ger- manely different. The court added that ELCO was relying on the physical product as a reference for various limita- tions because the descriptions in the Imtra catalog did not disclose all of the Hatteras product’s features. Mandamus is “reserved for extraordinary situations.” Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S. 271, 289 (1988) (citation omitted). Under the well-estab- lished standard for obtaining such relief, the petitioner must: (1) show it does not have any other method of obtain- ing relief; (2) show that it has a clear and indisputable legal right; and (3) convince the court that the “writ is appropri- ate under the circumstances.” Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004) (citation omitted). We cannot say that DMF has satisfied that standard. DMF has not shown that a post-judgment appeal is an inadequate remedy for asserting a statutory estoppel argu- ment. See In re Verinata Health, Inc., No. 2017-109, 2017 WL 1422489, at *2 (Fed. Cir. Mar. 9, 2017). Nor has DMF shown that it has a clear and indisputable right to relief. Significantly, DMF agreed to the legal standard for as- sessing statutory estoppel applied by the district court. In essence, DMF is challenging the district court’s application of that standard and its findings that ELCO was not judi- cially estopped from raising its arguments based on actions before the Patent Office. We are not convinced that DMF has met its heavy burden of showing that the district Case: 21-153 Document: 10 Page: 4 Filed: 09/09/2021

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court’s rulings in these regards are clearly and indisputa- bly erroneous. Accordingly, IT IS ORDERED THAT: The petition is denied. FOR THE COURT

September 09, 2021 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court s29