Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 1 of 15 PageID #: 4059
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`C.A. No. 15-228 (RGA)
`
`)))))))))
`
`
`
`
`
`C.A. No. 15-282 (RGA)
`
`
`
`
`
`C.A. No. 15-311 (RGA)
`
`)))))))))
`
`)))))))))
`
`))
`
`
`
`
`
`NOTICE OF SUPPLEMENTAL AUTHORITY
`
`
`
`Yesterday, on May 17, 2016, the United States Court of Appeals for the Federal
`
`Circuit issued a published decision concerning standing to sue for patent infringement where the
`
`transferor has retained certain rights to the patent. See Ex. A, Diamond Coating Technologies,
`
`LLC v. Hyundai Motor Am., No. 15-1844 (Fed. Cir. May 17, 2016). The decision bears on the
`
`ACCELERATION BAY LLC,
`
`
`
`
`
`ACTIVISION BLIZZARD, INC.
`
`Defendant.
`
`
`
`ACCELERATION BAY LLC,
`
`
`
`
`
`ELECTRONIC ARTS INC.,
`
`Defendant.
`
`
`
`ACCELERATION BAY LLC,
`
`
`
`
`
`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKSTAR GAMES, INC. and
`2K SPORTS, INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`Plaintiff,
`
`Plaintiff,
`
`
`
`v.
`
`
`
`v.
`
`
`
`Defendants.
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 2 of 15 PageID #: 4060
`
`arguments presented by the parties on Defendants' Motion to Dismiss for Lack of Standing
`
`(C.A. No. 15-228, D.I. 100; C.A. No. 15-282, D.I. 96; C.A. No. 15-311, D.I. 90).
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`
`
`/s/ Stephen J. Kraftschik
`____________________________________
`Jack B. Blumenfeld (#1014)
`Stephen J. Kraftschik (#5623)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`skraftschik@mnat.com
`
`Attorneys for Defendants
`
`
`
`
`
`
`
`
`
`
`OF COUNSEL:
`
`Michael A. Tomasulo
`Gino Cheng
`David K. Lin
`WINSTON & STRAWN LLP
`333 South Grand Avenue, 38th Floor
`Los Angeles, CA 90071
`(213) 615-1700
`
`David P. Enzminger
`WINSTON & STRAWN LLP
`275 Middlefield Road, Suite 205
`Menlo Park, CA 94025
`(650) 858-6500
`
`Daniel K. Webb
`Kathleen B. Barry
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`(312) 558-5600
`
`May 18, 2016
`
`2
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 3 of 15 PageID #: 4061
`Case 1:15-cv-00311-RGA Document135 Filed 05/18/16 Page 3 of 15 PagelD #: 4061
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 4 of 15 PageID #: 4062
`Case: 15-1844 Document: 67-2 Page: 1 Filed: 05/17/2016
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`DIAMOND COATING TECHNOLOGIES, LLC,
`Plaintiff-Appellant
`
`FEDERAL-MOGUL CORPORATION,
`Third Party Defendant
`
`v.
`
`HYUNDAI MOTOR AMERICA, HYUNDAI MOTOR
`COMPANY, KIA MOTORS AMERICA, INC., KIA
`MOTORS COMPANY, NISSAN NORTH AMERICA,
`INC., NISSAN MOTOR CO. LTD.,
`Defendants-Appellees
`______________________
`
`2015-1844, 2015-1861
`______________________
`
`Appeals from the United States District Court for the
`Central District of California in Nos. 8:13-cv-01480-GHK-
`DFM, 8:13-cv-01481-GHK-DFM, Judge George H. King.
`______________________
`
`Decided: May 17, 2016
`______________________
`
`JOSEPH SAMUEL GRINSTEIN, Susman Godfrey LLP,
`Houston, TX, argued for plaintiff-appellant. Also repre-
`sented
`by COLIN MICHAEL WATTERSON; OLEG
`ELKHUNOVICH, KATHRYN HOEK, MARC M. SELTZER, Los
`Angeles, CA.
`
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 5 of 15 PageID #: 4063
`Case: 15-1844 Document: 67-2 Page: 2 Filed: 05/17/2016
`
`2
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`REGINALD J. HILL, Jenner & Block LLP, Chicago, IL,
`argued
`for all defendants-appellees.
` Defendants-
`appellees Nissan North America, Inc., Nissan Motor Co.
`Ltd. also represented by PETER J. BRENNAN, CHAD J. RAY;
`ADAM G. UNIKOWSKY, Washington, DC.
`
`DANIEL TALLITSCH, Baker & McKenzie LLP, Chicago,
`IL, for defendants-appellees Hyundai Motor America,
`Hyundai Motor Company, Kia Motors America, Inc., Kia
`Motors Company. Also represented by D. JAMES PAK, San
`Francisco, CA.
`
`______________________
`
`Before WALLACH, BRYSON, and TARANTO, Circuit Judges.
`WALLACH, Circuit Judge.
`Appellant Diamond Coating Technologies, LLC (“Di-
`amond”) sued Appellees Hyundai Motor America, Hyun-
`dai Motor Company, Kia Motors America, Inc., Kia
`Motors Company, Nissan North America, Inc., and Nissan
`Motor Co. Ltd. (collectively, “Appellees”) in the United
`States District Court for the Central District of California
`(“District Court”) alleging infringement of U.S. Patent
`Nos. 6,066,399 and 6,354,008 (together, the “patents-in-
`suit”). The District Court dismissed the actions because it
`found that agreements between Diamond and Sanyo
`Electric Co., Ltd. (“Sanyo”), the original assignee of the
`patents-in-suit, did not confer patentee status on Dia-
`mond, allowing Diamond to sue Appellees without joining
`Sanyo. Diamond Coating Techs., LLC v. Hyundai Motor
`Am., Nos. 8:13-cv-01480-MRP, 8:13-cv-01481-MRP(DFM),
`2015 WL 2088892, at *6 (C.D. Cal. Apr. 1, 2015). The
`District Court subsequently held that nunc pro tunc
`agreements executed by Diamond and Sanyo after its
`decision in Diamond did not affect its determination. J.A.
`12 (order denying reconsideration).
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 6 of 15 PageID #: 4064
`Case: 15-1844 Document: 67-2 Page: 3 Filed: 05/17/2016
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`3
`
`Diamond appeals the District Court’s dismissals. We
`have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1)
`(2012). For the reasons provided below, we affirm.
`DISCUSSION
`I. Standard of Review
`Whether a party is a patentee able to sue another for
`patent infringement raises “a question of law that this
`court reviews de novo, applying Federal Circuit prece-
`dent.” WiAV Sols. LLC v. Motorola, Inc., 631 F.3d 1257,
`1263 (Fed. Cir. 2010) (citation omitted).
`II. Diamond Cannot Sue Alone Unless It Received All
`Substantial Rights in the Patents-in-Suit
`“A patentee shall have remedy by civil action for in-
`fringement of his patent.” 35 U.S.C. § 281 (2012) (empha-
`sis added). A “‘patentee’ includes not only the patentee to
`whom the patent was issued but also the successors in
`title to the patentee.” Id. § 100(d). A party may become
`the successor-in-title to the patentee. Id. § 261, ¶ 2
`(“[P]atents, or any interest therein, shall be assignable in
`law by an instrument in writing.”).
`In 2011, Diamond and Sanyo signed the Patent As-
`signment and Transfer Agreement (“PATA”) (J.A. 199–
`232) and the Ancillary Agreement (J.A. 246–56).1 When
`the patents-in-suit issued, the inventors assigned the
`
`1
`In their submissions, the parties designated the
`entire PATA and Ancillary Agreement as confidential.
`However, during oral argument, Diamond agreed to waive
`any claim of confidentiality at the court’s request. See
`Oral Argument at 3:44–4:49, available at http://oralargum
`ents.cafc.uscourts.gov/default.aspx?fl=2015-1844.mp3.
`Accordingly, we treat the terms of the PATA and Ancil-
`lary Agreement as public, including any such terms that
`accompany the parties’ arguments in their briefs.
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 7 of 15 PageID #: 4065
`Case: 15-1844 Document: 67-2 Page: 4 Filed: 05/17/2016
`
`4
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`patents to Sanyo. J.A. 82, 141. Sanyo then conveyed to
`Diamond various rights to and interests in the patents-in-
`suit via the PATA. J.A. 199–232.
`Diamond alleges the PATA provides Diamond with
`“legal title [to] the patents-in-suit,” Appellant’s Br. 14,
`such that it is the successor-in-title to the patents-in-suit,
`see id. at 16–17. Because it is the successor-in-title to the
`patents-in-suit, Diamond continues, it meets the defini-
`tion of “patentee” under 35 U.S.C. § 281. See id. And
`because it is a patentee under § 281, Diamond argues that
`it may sue Appellees without joining Sanyo. Id.
`Agreements transferring patent rights occur by as-
`signment or license. “An assignment of patent rights
`operates to transfer title to the patent, while a license
`leaves title in the patent owner” and transfers something
`less than full title and rights. Minco, Inc. v. Combustion
`Eng’g, Inc., 95 F.3d 1109, 1116 (Fed. Cir. 1996) (citation
`omitted). “To create an assignment, a contract must
`transfer: (1) the entire exclusive patent right, (2) an
`undivided interest[2] in the patent rights, or (3) the entire
`exclusive right within any geographical region of the
`United States.” Id. at 1117 (citation omitted). “An
`agreement that does not transfer one of these three inter-
`ests is merely a license.” Id. (citation omitted).
`We treat an agreement granting patent rights as a
`contract and interpret its terms consistent with the choice
`of law provision in the agreement in question. See Alfred
`E. Mann Found. for Sci. Research v. Cochlear Corp., 604
`
`
`2
`“When . . . multiple inventors are listed on the
`face of the patent, each co-owner presumptively owns a
`pro rata undivided interest in the entire patent, no matter
`what their respective contributions.” Isr. Bio-Eng’g
`Project v. Amgen, Inc., 475 F.3d 1256, 1263 (Fed. Cir.
`2007) (internal quotation marks and citation omitted).
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 8 of 15 PageID #: 4066
`Case: 15-1844 Document: 67-2 Page: 5 Filed: 05/17/2016
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`5
`
`F.3d 1354, 1359 (Fed. Cir. 2010). The PATA states that
`New York law governs the interpretation of its terms, J.A.
`219, and under that law we review the District Court’s
`interpretation of the PATA de novo, Dreisinger v. Teglasi,
`13 N.Y.S.3d 432, 435 (App. Div. 2015).
`In this case, Diamond asserts “patentee” status only
`as the alleged recipient of “the entire exclusive patent
`right” (not an undivided interest or a geographically
`limited entire exclusive right). On its face, “the entire
`exclusive patent right” must include all substantial rights
`in the patent. We have not allowed labels to control by
`treating bare formalities of “title” transfer as sufficient to
`determine that an “assignment” of the entire exclusive
`right has occurred. Rather, we have explained that, “[t]o
`determine whether a provision in an agreement consti-
`tutes an assignment or license, one must . . . examine the
`substance of what was granted.” Vaupel Textilmaschinen
`KG v. Meccanica Euro Italia S.p.A., 944 F.2d 870, 874
`(Fed. Cir. 1991); see Waterman v. Mackenzie, 138 U.S.
`252, 256 (1891); Prima Tek II, L.L.C. v. A-Roo Co., 222
`F.3d 1372, 1378 (Fed. Cir. 2000).
`We therefore must ask whether Diamond received all
`substantial rights in the patents-in-suit or, instead,
`whether Sanyo retained substantial rights. Unless Dia-
`mond received all substantial rights in the patents-in-suit
`at the time it filed suit in the District Court, it was not a
`“patentee” (allegedly without a joint owner). If Diamond
`was not a patentee, it could not bring this suit by itself.
`And since Diamond did not take the opportunity provided
`by the District Court to join Sanyo, the District Court
`properly dismissed the suit. See, e.g., Alfred E. Mann, 604
`F.3d at 1360.
`III. At the Time of Suit, Diamond Did Not Have All Sub-
`stantial Rights in the Patents-in-Suit
`The District Court held that the PATA did not convey
`all substantial rights in the patents-in-suit to Diamond.
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 9 of 15 PageID #: 4067
`Case: 15-1844 Document: 67-2 Page: 6 Filed: 05/17/2016
`
`6
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`Diamond, 2015 WL 2088892, at *5–6. In particular, it
`held that the following terms of the PATA weighed
`against finding a transfer of substantial rights: (1) Dia-
`mond could not assign the PATA to another party without
`Sanyo’s consent; (2) Sanyo retains an economic interest in
`future proceeds, including any that arise from infringe-
`ment litigation; (3) “Sanyo retains a license to make, use,
`and sell products covered by the patents-in-suit”; and (4)
`“Sanyo retains significant control over the decision to
`enforce the patents” because the PATA “condition[s]
`enforcement on consideration of the best interests of
`[Diamond] and Sanyo.” Id. at *5 (internal quotation
`marks and citation omitted).
`Diamond challenges these findings.3 It argues that
`“[t]he PATA vests [Diamond] with the sole right to ex-
`clude others,” Appellant’s Br. 19; “[n]othing in the PATA
`divests [Diamond]’s sole right to sue,” id. at 21; “[Dia-
`mond] could assign or sell the patents-in-suit,” id. at 23;
`“Sanyo’s economic interest did not deprive” Diamond of
`patentee status, id. at 30; “Sanyo’s non-exclusive license
`did not affect” Diamond’s patentee status, id. at 31; and
`“Sanyo did not control [Diamond]’s ability to enforce the
`patents-in-suit,” id. at 33. Thus, Diamond contends that
`the PATA transferred to it all substantial rights in the
`patents-in-suit. Id. at 12.
`We need not resolve all of Diamond’s questions be-
`cause two characteristics of the PATA resolve the issue
`before us. We “have never . . . establish[ed] a complete
`
`3
`In its opening brief, Diamond states that various
`provisions in the PATA were intended to achieve a partic-
`ular result, see, e.g., Appellant’s Br. 34, 37, but it cites no
`evidence to support its statements, see id. Accordingly,
`we disregard them as speculative. See Lucent Techs., Inc.
`v. Gateway, Inc., 580 F.3d 1301, 1327 (Fed. Cir. 2009)
`(speculation does not equate to evidence).
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 10 of 15 PageID #: 4068
`Case: 15-1844 Document: 67-2 Page: 7 Filed: 05/17/2016
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`7
`
`list of the rights” that “must be examined to determine
`whether a [patentee] has transferred away sufficient
`rights to render an[other party] . . . the owner of a pa-
`tent.” Alfred E. Mann, 604 F.3d at 1360. However, we
`have observed that (1) “the exclusive right to make, use,
`and sell . . . is vitally important,” and (2) “the nature and
`scope of the [patentee’s] retained right to sue accused
`infringers [and license the patent are] the most important
`factor[s] in determining whether an [agreement] . . .
`transfers sufficient rights to render the [other party] the
`owner of the patent.” Id. at 1360–61 (emphasis added).
`We examine each of these issues in turn.
`With respect to the first, Diamond does not possess
`sufficient rights to make, use, or sell the patented inven-
`tion. We have held that a “licensor’s retention of a limited
`right to develop and market the patented invention
`indicates that the licensee failed to acquire all substantial
`rights.” Fieldturf, Inc. v. Sw. Recreational Indus., Inc.,
`357 F.3d 1266, 1269 (Fed. Cir. 2004) (citation omitted).
`Sanyo retains a right and license to make, use, and sell
`products covered by the patents-in-suit. Section 2.4(a) of
`the PATA provides Sanyo with “a world-wide, royalty-
`free, non-exclusive, non-sublicensable, non-transferable
`. . . right and license . . . to practice the methods and to
`make, have made, use, distribute, lease, sell, offer for sale,
`import, export, develop and otherwise dispose of and
`exploit any” products covered by the patents-in-suit,
`including any “foundry[4] or contract manufacturing
`activities . . . that [Sanyo] . . . currently undertake[s] . . .
`or may undertake in the future.” J.A. 204. Indeed, the
`PATA does not even grant Diamond a right to practice the
`
`
`4 A “foundry” right is “a licensee’s right[] to make a
`product and sell
`it under a third party’s name.”
`CoreBrace LLC v. Star Seismic LLC, 566 F.3d 1069, 1071
`(Fed. Cir. 2009).
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 11 of 15 PageID #: 4069
`Case: 15-1844 Document: 67-2 Page: 8 Filed: 05/17/2016
`
`8
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`patents-in-suit. Section 5.1.1 of the PATA limits Diamond
`to the “prosecution, maintenance, licensing, litigation,
`enforcement and exploitation” of the patents-in-suit and
`explains that Diamond “shall engage in no [other] busi-
`ness or activity.” J.A. 208. Thus, in this respect, Dia-
`mond unquestionably failed to acquire all substantial
`rights in the patents-in-suit.
`Diamond contends that the court should construe “ex-
`ploitation” in Section 5.1.1 of the PATA to mean “practice”
`and “sell,” such that the PATA provides Diamond with
`sufficient rights to make, use, and sell the patented
`invention. Appellant’s Br. 24–26 (equating “exploitation”
`with “selling”); Oral Argument at 35:21–35:55 (equating
`“practice” with “exploitation”), available at http://oralargu
`ments.cafc.uscourts.gov/default.aspx?fl=2015-1844.mp3.
`“Practice” and “sell” appear in Section 2.4(a) of the PATA.
`J.A. 204. If the parties intended for Diamond to possess
`the rights to practice and sell the patents-in-suit, Section
`2.4(a) indicates that they knew how to say so.5 See
`Dreisinger, 13 N.Y.S.3d at 435 (“Our function is to apply
`the meaning intended by the parties, as derived from the
`language of the contract in question.” (internal quotation
`marks and citations omitted)).
`With respect to the second issue, “[r]etaining control
`of [licensing or litigation] activities is [] critical to demon-
`
`5 Among other words, “exploitation” follows “prose-
`cution,” “licensing,” “litigation,” and “enforcement” in
`Section 5.1.1 of the PATA, which indicates that “exploita-
`tion” concerns enforcement activities not explicitly ad-
`dressed by the PATA. See J.A. 208; see also Harris v.
`Allstate Ins. Co., 127 N.E.2d 816, 818 (N.Y. 1955) (apply-
`ing the principle noscitur a sociis—that the meaning of a
`word should be derived from the words immediately
`surrounding it—to interpret a contract); Noscitur a Sociis,
`Black’s Law Dictionary (10th ed. 2014).
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 12 of 15 PageID #: 4070
`Case: 15-1844 Document: 67-2 Page: 9 Filed: 05/17/2016
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`9
`
`strating that the patent has not been effectively assigned
`to the licensee.” Azure Networks, LLC v. CSR PLC, 771
`F.3d 1336, 1343 (Fed. Cir. 2014) (citations omitted),
`vacated on other grounds, 135 S. Ct. 1846 (2015). Sanyo
`retained significant control over Diamond’s enforcement
`and litigation activities. First, the PATA conditions
`Diamond’s
`litigation and enforcement activities on
`Sanyo’s best interests. Section 5.1.4 of the PATA states
`that Diamond, “in its reasonable sole discretion,” “shall
`pursue the licensing, litigation, enforcement and other
`exploitation of the [patents-in-suit] to generate revenue
`for so long as [Diamond] determines in good faith, taking
`into consideration the best interests of [Diamond] and
`[Sanyo], that it is commercially reasonably to do so.” J.A.
`209 (emphases added). Second, the PATA cabins Dia-
`mond’s authority to license the patents-in-suit. Section
`5.2.2 of the PATA explains that Diamond “shall not”
`license the patents-in-suit jointly with patents owned by
`another party absent Sanyo’s prior written consent. J.A.
`210. Third, the PATA and Ancillary Agreement limit
`Diamond’s discretion to refrain from suing certain com-
`panies. As the District Court observed, the agreements
`provide
`a list of companies which [Diamond] “reserves the
`right not to assert the [patents-in-suit] against.”
`Sanyo “acknowledges and agrees” that [Dia-
`mond]’s decision not to seek enforcement against
`these companies “shall not form a basis for alleg-
`ing that [Diamond] breached any obligation under
`the PATA.” Furthermore, [Diamond] may not add
`companies to [the list] “in bad faith or in a man-
`ner that would reasonably be viewed as circum-
`vention of the business objectives” of the [PATA].
`Diamond, 2015 WL 2088892, at *6 (brackets and citations
`omitted). The District Court properly concluded that, “if
`[Diamond] had unfettered discretion on enforcement, then
`[the list] would be superfluous.” Id. Section 5 and Ap-
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 13 of 15 PageID #: 4071
`Case: 15-1844 Document: 67-2 Page: 10 Filed: 05/17/2016
`
`10
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`pendix 2 of the Ancillary Agreement also provide a list of
`“companies that Sanyo reasonably believes represent
`licensing opportunities” and restrict Diamond’s ability to
`remove companies from that list. J.A. 249, 256. These
`provisions show that Sanyo retained significant control
`over Diamond’s enforcement and litigation activities.
`The PATA and the Ancillary Agreement therefore did
`not convey all of the substantial rights in the patents-in-
`suit to Diamond. Accordingly, we hold that Diamond is
`not a “patentee” under 35 U.S.C. § 281.
`IV. Precedent Bars Consideration of the Nunc Pro Tunc
`Agreements
`Following the District Court’s decision in Diamond,
`Diamond and Sanyo executed nunc pro tunc agreements,6
`purportedly “to clarify the parties’ original intent; namely,
`to grant full ownership of the patents in question to
`[Diamond].” Appellant’s Br. 12. Diamond asserts these
`nunc pro tunc agreements effectively establish Diamond’s
`status as a patentee. Id. at 43. We conclude they do not.
`In Alps South, LLC v. Ohio Willow Wood Co., we held
`that “[n]unc pro tunc assignments are not sufficient to
`confer retroactive [patentee status].” 787 F.3d 1379, 1384
`(Fed. Cir. 2015) (citation omitted). Although Diamond
`contends that the nunc pro tunc agreements cure its
`patentee problems, Appellant’s Br. 43–49, it concedes that
`“the panel should . . . affirm . . . based on Alps South”
`unless there is “intervening authority from an en banc
`panel of this Court or the Supreme Court,” id. at 43.
`Because neither the en banc court nor the Supreme Court
`has overruled Alps South, we reject Diamond’s argument.
`See Deckers Corp. v. United States, 752 F.3d 949, 965
`
`6 The phrase “nunc pro tunc” means “[h]aving ret-
`roactive legal effect.” Nunc Pro Tunc, Black’s Law Dic-
`tionary (10th ed. 2014).
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 14 of 15 PageID #: 4072
`Case: 15-1844 Document: 67-2 Page: 11 Filed: 05/17/2016
`
`DIAMOND COATING TECHS., LLC v. HYUNDAI MOTOR AM.
`
`11
`
`(Fed. Cir. 2014) (explaining that panels do not have the
`authority to overrule prior precedential panel decisions
`unless the en banc court or the Supreme Court overturns
`the prior decision).
`
`CONCLUSION
` We have considered Diamond’s remaining arguments
`and find them unpersuasive. Accordingly, the decisions of
`the United States District Court for the Central District
`of California are
`
`AFFIRMED
`
`

`

`Case 1:15-cv-00311-RGA Document 135 Filed 05/18/16 Page 15 of 15 PageID #: 4073
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 18, 2016, I caused the foregoing to be electronically
`
`
`
`
`
`filed with the Clerk of the Court using CM/ECF, which will send notification of such filing to all
`
`registered participants.
`
`
`
`
`
`I further certify that I caused copies of the foregoing document to be served on
`
`May 18, 2016, upon the following in the manner indicated:
`
`Philip A. Rovner, Esquire
`Jonathan A. Choa, Esquire
`POTTER ANDERSON & CORROON LLP
`1313 North Market Street, 6th Floor
`Wilmington, DE 19801
`Attorneys for Plaintiff
`
`Paul J. Andre, Esquire
`Lisa Kobialka, Esquire
`James R. Hannah, Esquire
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Attorneys for Plaintiff
`
`Aaron M. Frankel, Esquire
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Attorneys for Plaintiff
`
`
`VIA ELECTRONIC MAIL
`
`VIA ELECTRONIC MAIL
`
`VIA ELECTRONIC MAIL
`
`
`
`
`/s/ Stephen J. Kraftschik
`_____________________________
`Stephen J. Kraftschik (#5623)
`
`
`
`