The U. S. Court of Appeals for the Federal Circuit, in a rare exercise of its supervisory authority, issued a writ of mandamus directing a district court to stay its proceedings pursuant to 28 U.S.C. § 1659 until the parallel U.S. International Trade Commission (ITC) proceedings were no longer subject to judicial review. In re Princo Corp., Misc. Docket No. 841 (Fed. Cir., Mar. 1, 2007) (Dyk, J.).
The petitioner, Princo Corp., filed a petition for a writ of mandamus asking the Court to vacate the district court’s grant of summary judgment and stay the case pursuant to § 1659 until the related ITC proceedings were complete. The Court first determined that issues “properly before the Federal Circuit on appeal are no less within [the Court’s] jurisdiction when raised by extraordinary writ.” In the present case, the issue was interpretation of § 1659, and the Federal Circuit held that in the context of a patent infringement case, this substantive issue was to be determined as a matter of Federal Circuit law. The respondent, U.S. Philips Corp., argued that the issue on writ was a matter of procedure and not one of substantive patent law and that the Court should decline to exercise its supervisory authority. The Court disagreed, pointing to numerous cases illustrating its exercise of mandamus authority in a variety of contexts, some that did and some that did not directly implicate substantive patent law.
In issuing the writ of mandamus, the Court found that Princo met the heavy burden of demonstrating that its right to issuance of the writ is “clear and undisputable” and that “it lacks adequate alternative means to obtain the relief sought.” The Court began by answering the previously open question of the meaning of when an ITC determination “becomes final” as contemplated by § 1659. Citing various federal statutes using similar language, as well as the purpose of § 1659, i.e., to prevent separate proceedings on the same issues occurring at the same time, the Court concluded that § 1659 requires the stay of district court proceedings continue until the ITC proceedings are no longer subject to judicial review. Finally, the Court found that Princo’s right to issuance of the writ was clear and undisputable because its right to stay the district court proceeding could not be corrected on direct appeal, since § 1659 was designed to prevent the proceedings from occurring in the first place.