Viavi Solutions Inc. v. Platinum Optics Technology Inc.

Background

Viavi alleged that Platinum Optics Technology Inc. (PTOT) induced infringement of claims in four patents involving low-angle-shift optical filters made with hydrogenated silicon. Viavi alleged that PTOT supplied an accused filter, known as the “11246 Filter,” for use in mobile phones and tablets imported and sold in the United States. Viavi sought infringement-related relief under 35 U.S.C. §§ 271 and 281–285.

PTOT asserted counterclaims seeking declaratory judgments of non-infringement and invalidity. The parties had also litigated related patent disputes in China and Taiwan. PTOT filed inter partes review petitions challenging most of the asserted claims, and the district court had stayed this case while those proceedings were pending. After the stay was lifted, PTOT renewed its motion for summary judgment concerning the 11246 Filter.

Viavi later moved under Federal Rule of Civil Procedure 41(a)(2) to voluntarily dismiss its infringement claims. Viavi sought dismissal with prejudice concerning the 11246 Filter. The parties could not agree on stipulated dismissal language, including language concerning PTOT’s ability to seek attorney fees.

The parties’ positions

Viavi argued that dismissal with prejudice would prevent it from later bringing the same infringement claims concerning the 11246 Filter. PTOT argued that dismissal of the entire action was improper because it had pleaded counterclaims for non-infringement and invalidity. PTOT asked the court to adjudicate those counterclaims through its pending summary-judgment motion and requested that any dismissal preserve its ability to seek attorney fees under 35 U.S.C. § 285.

Court’s analysis

Under Rule 41(a)(2), a court may allow voluntary dismissal on appropriate terms. When a defendant has already pleaded a counterclaim, dismissal over the defendant’s objection is allowed only if the counterclaim can remain pending for independent adjudication. The court determined that PTOT’s counterclaims did not need to remain pending here.

The court reasoned that Viavi’s infringement claims would be dismissed with prejudice, preventing Viavi from later accusing PTOT of infringing the asserted patents through the 11246 Filter. As a result, PTOT’s non-infringement counterclaims served no additional useful purpose. The court also found that PTOT’s invalidity counterclaims would be litigated in Viavi’s second suit involving the same asserted patents, so PTOT would not be prejudiced by dismissing those counterclaims in this action.

The court further held that a dismissal with prejudice under Rule 41(a)(2) would make PTOT a prevailing party under the Patent Act’s attorney-fee provision, 35 U.S.C. § 285. The ruling allowed PTOT to seek attorney fees but did not award fees.

Disposition

Judge Edward J. Davila granted Viavi’s motion to dismiss its patent-infringement claims without adopting Viavi’s proposed dismissal language. Viavi’s claims were dismissed with prejudice. PTOT’s counterclaims were dismissed without prejudice. The court denied as moot PTOT’s re-noticed motion for summary judgment of non-infringement.