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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 1 of 11 PageID #: 14521
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ST. CLAIR INTELLECTUAL PROPERTY
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`CONSULTANTS INC.,
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`Plaintiff,
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`v.
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`MATSUSHITA ELECTRONIC INDUSTRIAL
`CO., LTD., et al.
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`Defendants.
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`ST. CLAIR INTELLECTUAL PROPERTY
`CONSULTANTS, INC.,
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`Plaintiff,
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`v.
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`PALM INC., et al.
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`Defendants.
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`: C.A. No. 04-1436-LPS
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`: C.A. No. 06-404-LPS
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`Frederick L. Cottrell, III, Esquire, Chad M. Shandler, Esquire, and Laura D. Hatcher, Esquire of
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`RICHARDS, LAYTON & FINGER, Wilmington, DE.
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`Ronald J. Schultz, Esquire, Becky R. Thorson, Esquire, Jake M. Holdreith, Esquire, Carrie M.
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`Lambert, Esquire, Annie Huang, Esquire, and Seth A. Northrop, Esquire of ROBINS, KAPLAN,
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`MILLER & CIRESI LLP, Minneapolis, MN.
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`Attorneys for Plaintiff St. Clair Intellectual Property Consultants Inc.
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`John G. Day, Esquire, Tiffany Geyer Lydon, Esquire, and Caroline Hong, Esquire of ASHBY &
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`GEDDES, P.A., Wilmington, DE.
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`Richard de Bodo, Esquire, Robert J. Benson, Esquire, and Huan-Yi Lin, Esquire of HOGAN
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`LOVELLS US LLP, Los Angeles, CA.
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`Attorneys for Defendants HTC Corporation, H.T.C. (B.V.I.) Corporation, and HTC America, Inc.
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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 2 of 11 PageID #: 14522
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`John G. Day, Esquire, Tiffany Geyer Lydon, Esquire, and Caroline Hong, Esquire of ASHBY &
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`GEDDES, P.A., Wilmington, DE.
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`Steven J. Routh, Esquire, Sten A. Jensen, Esquire, Alex V. Chachkes, Esquire, and Trevor C.
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`Hill, Esquire of ORRICK HERRINGTON & SUTCLIFFE LLP, Washington, DC.
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`Attorneys for the Fujifilm Defendants.
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`John W. Shaw, Esquire, Karen E. Keller, Esquire, and Megan C. Haney, Esquire of YOUNG
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`CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE.
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`David C. Doyle, Esquire, M. Andrew Woodmansee, Esquire, Philip A. Morin, Esquire, Greg
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`Reilly, Esquire, and Christian G. Andreu-von Euw, Esquire of MORRISON & FOERSTER LLP,
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`San Diego, CA.
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`Attorneys for Defendants Kyocera Wireless Corporation, Kyocera Communications, Inc., and
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`Palm, Inc.
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`MEMORANDUM OPINION
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`
`June 1,2011
`Wilmington, Delaware
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`

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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 3 of 11 PageID #: 14523
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`Pending before the Court is the request of all remaining parties to permit the withdrawal
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`of the Motion for Recusal ("Motion") (D.1. 1046) filed by the Moving Defendants. 1 (D.1. 1062f
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`The request will be GRANTED. Accordingly, the Motion will be DENIED.
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`I.
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`BACKGROUND
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`A.
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`The Motion
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`These Related Cases3 were originally assigned to the Honorable Joseph 1. Farnan, Jr.,
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`who has since retired. By Order dated October 15, 2008, Judge Farnan referred these cases to
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`me, in my capacity as a magistrate judge. (D.1. 157)4 Judge Farnan's Order expressly referred
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`the actions to me "for discovery and other pretrial matters that may arise." (/d) It was
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`understood that "other pretrial matters" included alternative dispute resolution. Thus, when I
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`entered a scheduling order on November 25, 2008, I indicated that "[t]hese matters are referred to
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`a magistrate judge to explore the possibility of alternative dispute resolution." (D.L 166 ~ 7)
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`Thereafter, between November 20,2009 (see D.L 447) and June 24, 2010 (see D.1. 1014),
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`IThe "Moving Defendants" are: HTC Corp., H.T.C. (B.V.I.) Corp., HTC America, Inc.,
`FujiFilm Corporation, Fuji Photo Film Co., Ltd., Fuji Photo Film USA Inc., Fujifilm America
`Inc., Fujifilm Holdings Corporation, Fujifilm USA Inc., Kyocera Wireless Corp., Kyocera
`Communications, Inc., and Palm, Inc. (D.1. 1046 at 1)
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`2Unless otherwise noted, all docket index ("D.I.") references are to Civil Action Number
`04-1436. With few exceptions, he same filings can be found at other D.1. numbers in the other
`related actions.
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`3The various "Related Cases" are: C.A. 01-557, C.A. 03-241, C.A. 04-1436, C.A. 06-403,
`c.A. 06-404, C.A. 08-371, C.A. 08-373, C.A. 09-804, and C.A. 10-77.
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`41 was sworn in as a district judge on August 16,2010. On August 17,2010, these cases
`were assigned to me for all purposes.
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`1
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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 4 of 11 PageID #: 14524
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`I conducted at least fifteen in-person mediation conferences, attended by Plaintiff and one or
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`more Defendant. (See D.I. 1050 at 3-4) I also participated in what I estimate to be
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`approximately 50 off-the-record ADR-related telephone conferences, usually with Plaintiff and at
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`least one Defendant but sometimes ex parte. As part of these proceedings, and most especially
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`during the mediation conferences, I spent numerous hours engaged in ex parte discussions,
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`including about the merits of these cases as well as the parties' strategies, tactics, and litigation
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`goals.
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`On June 25, 2010, as a magistrate judge, I entered an order (the "June 2010 Order"),
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`noting that Judge Farnan would be retiring on July 31, 2010, the parties had not consented to the
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`jurisdiction of a magistrate judge, and that there were pending numerous case-dispositive
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`motions with respect to which I would only be able to issue Reports & Recommendations
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`("R&Rs"). (D.I. 1031) At that time there was uncertainty as to which district judge would be
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`available to review any objections to my R&Rs and to preside at trial. Therefore, I vacated all
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`dates in the Scheduling Order (including cancelling the trials that were then set to begin on
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`September 7,2010) and stayed the cases. At the same time, I directed the parties to provide the
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`Court with their views as to how these cases should proceed, including whether there was
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`unanimous consent to magistrate jurisdiction and "whether the fact that the undersigned
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`magistrate judge has participated in extensive mediation efforts in these cases, including
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`numerous ex parte discussions of issues including the merits of the case, would require the
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`undersigned magistrate judge to be recused from presiding at trial in these cases." (June 2010
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`Order at 3) In the parties' subsequent letters, the Court learned that there was not unanimous
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`consent to magistrate jurisdiction. (D.!. 1036, 1037) The Court was also advised that while
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`2
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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 5 of 11 PageID #: 14525
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`Plaintiff did not believe I should be recused from presiding at trial, one or more of the
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`Defendants did feel that recusal was required. (D.1. 1036 at 1) I then entered a schedule for
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`briefing a motion for recusal. (D.1. 1038)
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`Subsequently, on August 13,2010, the Moving Defendants filed their Motion for
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`Recusal. (D.!. 1046) The Motion was brought pursuant to 28 U.S.C. § 455(a), which provides
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`for recusal in a situation in which "a reasonable person, with knowledge of all the facts, would
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`conclude that the judge's impartiality might reasonably be questioned." In re Kensington Int'l
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`Ltd., 368 F.3d 289,301 (3d Cir. 2004). In the Motion, the Moving Defendants make clear that
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`they "do not suggest that any actual impropriety or misconduct has occurred or that the Court is
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`actually biased or prejudiced against one or more parties." (D.L 1046 at 1; see also c.A. 08-373
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`D.1. 346 at 1 ("[T]he Moving Defendants reiterate that this motion is not based on any concerns
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`about wrongdoing, impropriety or misconduct on Your Honor's part.")) "Instead, the Moving
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`Defendants' motion arises out of the unique circumstances of this case, in which Your Honor is
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`stepping into the role of an Article III Judge after engaging in substantive ex parte
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`communications with the parties while presiding over mediations and facilitating the parties'
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`settlement discussions as a Magistrate Judge." (C.A. 08-373 D.1. 346 at 1-2) The Moving
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`Defendants insisted that, "in view of the parties' unrecorded and confidential ex parte
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`communications with Your Honor regarding the substance and merits of the case," "recusal is
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`appropriate to maintain the appearance of impartiality and the confidence of the public and
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`litigants in the certainty of the judicial process and the adversarial nature of our system of
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`justice." (D.1. 1046 at 9, 7)
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`3
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`t
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`1
`1
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`I 1
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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 6 of 11 PageID #: 14526
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`B.
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`The Fuiifiim Opinion
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`On January 10,2011, the Federal Circuit issued its decision in St. Clair Intellectual
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`Property Consultants, Inc. v. Canon, Inc., Nos. 2009-1052, 2010-1137, 2010-1140, 2011 WL
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`66166 (Fed. Cir. Jan. 10,2011) (hereinafter "Fujifilm Opinion"). This was an appeal from this
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`Court's Civil Action No. 03-241. The Fujifilm Opinion rejected this Court's construction of
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`disputed claim terms in the same patents that are asserted in the remaining Related Cases. The
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`Fujifilm Opinion also reversed the finding of infringement against the Fujifilm defendants.
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`The parties advised the Court of the Fujifilm Opinion by letters dated January 20 and 26,
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`2011. (D.1. 1055, 1056) In their letter, all Defendants asserted that they are now entitled to a
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`judgment of non-infringement. (D.I. 1056 at 3) Defendants suggested that "[i]f St. Clair will not
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`concede that the Federal Circuit's claim construction is dispositive, the Court should consult with
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`counsel for the parties to set a briefing schedule for Defendants' motions of summary judgment
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`ofnon-infringement." (Id.) Defendants' letter made no reference to the still-pending Motion
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`filed by the Moving Defendants.
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`On February 28,2011, the Court held a status teleconference. The Court inquired as to
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`the impact of the pending Motion on further proceedings. (D.1. 1058 at 9) Counsel for the
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`Remaining Defendants5advised that because St. Clair's motion for rehearing in connection with
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`the Fujifilm Opinion was pending, there was nothing for the Court to do at that point. (Id. at 9­
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`10) On March 29,2011, the Federal Circuit denied st. Clair's petition for rehearing and
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`rehearing en banco (D.1. 1061 at 2)
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`5The "Remaining Defendants" are: HTC Corp., H.T.C. (B.V.I.) Corp., HTC America,
`Inc., Kyocera Wireless Corp., Kyocera Communications, Inc., Palm, Inc., Hewlett-Packard Co.,
`Nokia Corporation, Research In Motion LTD, and Research In Motion Corp.
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`4
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`

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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 7 of 11 PageID #: 14527
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`Subsequently, on April 14, 2011, the parties filed a joint letter outlining their proposals
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`for how these matters should proceed. (D.l. 1064) With respect to recusal, the Moving
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`Defendants stated: "In light of the Federal Circuit's decision, which changes the posture of these
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`actions, the Fujifilm, Kyocera, Palm and HTC defendants are considering withdrawing their
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`motions to recuse, and they expect to make a final decision in that regard before the April 19
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`conference." (Id at 2 n.l) On April19, 2011, the Moving Defendants filed a "Withdrawal of
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`Motion for Recusal." (D.l. 1065) It states:
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`Given that the Federal Circuit's decision changes the posture of
`these cases substantially from the posture of the cases in which
`Your Honor was involved in mediating, Moving Defendants
`hereby withdraw their Motion for Recusal and consent to Your
`Honor's adjudication of all remaining issues in these cases.
`Moving Defendants believe that this will result in the most prompt
`and efficient resolution of these cases, which now have been
`pending for up to seven years.
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`(Id at 1-2)
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`Later that same day, the Court held another status teleconference, and during it the
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`Moving Defendants explained why they had withdrawn the Motion. (D.I. 1068 at 22-25)
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`Counsel for the Moving Defendants stated:
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`The claim construction has now changed. The Court is no longer, I
`wouldn't expect, looking at this case and saying, in any way, shape
`or fonn, why wouldn't Fujifilm see things the way another
`defendant might or make concessions that another defendant might
`because we now have a claim construction that changes
`fundamentally the posture of the case.
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`(Id at 24) Counsel for Plaintiff indicated that he agreed with the Moving Defendants that they
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`5
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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 8 of 11 PageID #: 14528
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`could withdraw their Motion. (ld. 1068 at 15-16) The Court then directed the parties to "file
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`letter briefs with respect to whether or not the recusal motion can, and should be, withdrawn in
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`the circumstances here." (ld. 1068 at 28)
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`C.
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`The Withdrawal Request
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`Thereafter, on May 2,2011, the parties filed ajoint letter. (D.l. 1067) In it, the parties
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`observe that the Motion was filed solely under 28 U.S.C. § 455(a) based on the contention that
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`my participation in the mediations as a magistrate judge, followed by my presiding over these
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`actions as a district judge, would create an appearance of impropriety. (Id. at 2) No actual bias
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`or lack of impartiality or impropriety was alleged. (ld.) In the parties' view, the Fujifilm
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`Opinion "has changed the factual circumstances underlying the Motion," making "the context of
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`these cases ... now fundamentally different" than when I participated in the mediations. (ld.) It
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`follows, in the parties' view, that my participation in the mediations no longer presents a basis
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`for even an appearance of impropriety. (ld. at 5) Under these circumstances, the parties
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`continue, the law permits a recusal motion to be withdrawn, and I am urged to allow that to be
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`done here. (Id.)
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`II.
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`DISCUSSION
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`It is settled that a basis for recusal under § 455(a) may be waived. The recusal statute
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`itself contains a waiver provision: 28 U.S.C. § 455(e) provides that "[w]here the ground for
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`disqualification arises only under subsection (a), waiver may be accepted provided it is preceded
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`by a full disclosure on the record of the basis for disqualification." See also United States v.
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`Nobel, 696 F.2d 231, 236 (3d Cir. 1982) ("[W]here the basis ofthe judge's disqualification is
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`because his impartiality might reasonably be questioned under subsection (a), a waiver is
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`6
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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 9 of 11 PageID #: 14529
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`pennitted.") (internal quotation marks omitted). Here, I disclosed the potential grounds for
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`recusal in the June 2010 Order. The parties thereafter fully briefed the Motion. There can be no
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`doubt that there has been full disclosure on the record.
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`Courts have pennitted withdrawal ofrecusal motions brought under § 455(a). See Taylor
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`v. Teledyne Techs., Inc., 338 F. Supp. 2d 1323, 1330-31 (N.D. Ga. 2004); see also Marshall v.
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`District a/Columbia, 50 F.3d 1096 (table), 1995 WL 116258, at *2 (D.C. Cir. Feb. 22,1995)
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`("[I]n light of the judge's inquiry and the silence of Marshall's counsel regarding the pending
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`recusal motion, the judge could reasonably assume that Marshall had decided not to press the
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`issue and in effect had withdrawn the motion."). Courts have also recognized that waiver of a
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`§ 455(a) recusal can occur when a recusal motion is not brought in a timely manner. See, e.g., In
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`re Int'! Bus. Machs. Corp., 618 F.2d 923,932 (2d Cir. 1980).
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`The circumstances presented here make withdrawal of the Motion appropriate. All
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`parties recognize that in the Fujifilm Opinion, the Federal Circuit vacated portions of this Court's
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`claim construction ruling. (D.L 1067 at 4) I agree with this observation offered by the parties:
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`Regardless of what the Court ultimately finds is the effect of the
`Federal Circuit's Fujifilm decision, there is no dispute that it
`significantly altered the context of these proceedings. No
`reasonable person knowing all of the facts could question Your
`Honor's impartiality based on mediations that occurred in a very
`different factual and legal environment.
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`(D.I. 1067 at 4-5)
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`It is also worth noting that the earliest of these related cases has been pending since 2004.
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`Some judicial officer needs to address the impact of the Fujifilm Opinion on these cases and
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`7
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`!
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`l
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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 10 of 11 PageID #: 14530
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`should do so in a timely manner. See generally Fed. R. Civ. Proc. 1 (noting that Rules should be
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`applied to promote "just, speedy, and inexpensive determination" of matters); see also United
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`States v. York, 888 F.2d 1050, 1055 (5th Cir. 1989) ("[T]he waiver provision in section 455(e)
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`relating to section 455(a) is justified by concern for judicial economy."). The Moving
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`Defendants have agreed that their request to withdraw the Motion is with prejudice and that they
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`will not file the Motion again even if I disagree with their interpretation of the impact of the
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`Fujifilm Opinion. (D.1. 1067 at 4) Plainly, then, judicial economy would be best served by
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`permitting withdrawal of the Motion.6
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`Finally, a judge's duty to not recuse when he or she need not do so is as strong an
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`imperative as a judge's duty to recuse in those limited circumstances in which recusal is
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`warranted. See Svindlandv. Nemours Found., 2009 WL 2603183, at *2 (E.D. Pa. Aug. 21,2009)
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`("Judicial recusal is not to be undertaken lightly, and, as courts in this circuit and in other circuits
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`acknowledge, there is as much obligation upon a judge not to recuse herself when there is no
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`occasion to do so as there is for her to recuse when there is."); us. v. Wecht, 2008 WL 1773928,
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`at *4 (W.D. Pa. Apr. 16, 2008) ("Because granting a motion to recuse necessarily results in a
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`waste of the judicial resources which have already been invested in the proceeding, ... a judge is
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`as much obliged not to recuse himself when it is not called for as he is obligated to when it is.")
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`(internal citations and quotation marks omitted); Thompson v. Eva's Vill. & Sheltering Program,
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`2005 WL 2474930, at *4 (D.N.J. Oct. 5,2005) ("Just as a district court has a duty to recuse itself
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`6After receiving the parties' proposal, I entered a briefing schedule for cross-motions for
`summary judgment. Such briefing, which will address the parties' competing views as to the
`impact of the Fujfilm Opinion on these cases, will be completed by the end of July. (See D.1.
`1066)
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`8
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`Case 1:06-cv-00404-LPS Document 773 Filed 06/01/11 Page 11 of 11 PageID #: 14531
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`under the appropriate circumstances, it has a corollary duty not to recuse itself when there is no
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`obligation to do so under 28 U.S.C. §§ 144 and 455."); see also Brody v. President & Fellows of
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`Harvard Coil., 664 F.2d 10, 12 (1st Cir. 1981) ("We would add, especially at a time when the
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`judiciary is responsible for handling an ever mounting sea of litigation, that [t]here is as much
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`obligation upon a judge not to recuse himself when there is no occasion as there is for him to do
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`so when there is.") (internal quotations marks and other punctuation omitted). Here, I agree with
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`the parties that recusal is not necessary. My obligation, then, is to continue to preside over these
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`7
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`cases.
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`III. CONCLUSION
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`Accordingly, the Court accepts the Moving Parties' withdrawal of their Motion. The
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`Motion is DENIED WITH PREJUDICE due to waiver.
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`7This imperative, while always strong, is heightened in the situation currently prevailing
`in this Court. The District of Delaware has four authorized judgeships; since December 15,
`2006, no more than three ofthese judicial seats have been filled (and at one point we had only
`two active district judges). Over this same period, our caseload has grown significantly, to the
`point where, for instance, I currently have more than 450 civil cases on my docket. We also have
`the highest number of patent cases per judgeship in the country (for instance, I currently have
`well over 100 patent cases). See generally James Pistarino, Concentration ofPatent Cases in
`Eastern District ofTexas Increases in 2010,81 BNA's Pat., Trademark & Copyright J. 803, tb1.2
`(2011) (showing that 255 new patent cases were filed in District of Delaware in 2010). The
`Court has had to rely on the generous service of approximately 15 visiting judges - from the
`Eastern District of Pennsylvania and the District of New Jersey - to help it through this extended
`period ofjudicial vacancies. Under these circumstances, even were there doubt about whether I
`should permit the Motion to be withdrawn, I would resolve those doubts if favor of withdrawal.
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`9