Fraunhofer-Gesellschaft Zur Förderung Der Angewandten Forschung E.v. v. Sirius Xm Radio Inc.

United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Argued October 13, 2022 Decided February 17, 2023
No. 22-7001
FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER
ANGEWANDTEN FORSCHUNG E.V.,
APPELLEE
v.
SIRIUS XM RADIO INC.,
APPELLEE
MY-CHAU NGUYEN,
APPELLANT
Appeal from the United States District Court
for the District of Columbia
(No. 1:21-mc-00014)
Mark A. Baghdassarian argued the cause for appellant.
With him on the briefs were Alan R. Friedman and Shannon H.
Hedvat.
David C. McPhie argued the cause for appellee. With him
on the brief was Kelsey L. Schuetz.
Before: SRINIVASAN, Chief Judge, HENDERSON, Circuit
Judge, and EDWARDS, Senior Circuit Judge.

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Opinion for the Court filed by Senior Circuit Judge
EDWARDS.
EDWARDS, Senior Circuit Judge: In February 2017,
Fraunhofer-Gesellschaft zur Förderung der angewandten
Forschung E.V. (“Fraunhofer”) initiated a patent infringements
lawsuit against Sirius XM Radio Inc. (“Sirius XM”) in the
United States District Court for the District of Delaware. After
filing suit, Fraunhofer subpoenaed Sirius XM’s former Chief
Marketing Officer, My-Chau Nguyen, for a deposition. When
Nguyen failed to appear for her deposition, the parties filed
motions in the District Court for the District of Columbia
(“District Court”), to address the situation. The District Court
denied Nguyen’s motion to quash the subpoena, ordered her to
sit for her deposition, found her in contempt for defying the
subpoena, and expressed an intent to award sanctions. Nguyen
sat for her deposition and then, before any judgment had been
issued on sanctions, she appealed the District Court’s orders
against her. Before this court, Nguyen argues that the District
Court abused its discretion in compelling her deposition,
finding her in contempt, and expressing an intent to award
sanctions.
We dismiss the appeal for want of jurisdiction. Nguyen’s
challenge to the District Court’s order compelling her
deposition is moot because her deposition testimony has been
given. Nguyen’s challenges to the District Court’s contempt
finding and intent to award sanctions raise matters relating to a
discovery proceeding ancillary to a patent suit which are within
the exclusive jurisdiction of the United States Court of Appeals
for the Federal Circuit. See 28 U.S.C. § 1295(a)(1).
Nguyen requests that, rather than dismissing her appeal,
we transfer the case to the Federal Circuit pursuant to 28 U.S.C.
§ 1631. That provision states that if a “court finds that there is

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a want of jurisdiction, the court shall, if it is in the interest of
justice, transfer such action or appeal to any other such court in
which the action or appeal could have been brought at the time
it was filed or noticed.” 28 U.S.C. § 1631. However, we cannot
transfer this case to the Federal Circuit because, under the law
of that Circuit, Nguyen’s appeal could not have been brought
in the Federal Circuit at the time when it was noticed in this
court. The District Court’s contempt finding and intent to
award sanctions are not final, appealable orders under Federal
Circuit law because no final judgment has been issued on
sanctions. We therefore lack the authority to transfer this
appeal to the Federal Circuit under 28 U.S.C. § 1631.
In these circumstances, we are obliged to dismiss
Nguyen’s appeal for want of jurisdiction. The case will be
remanded to the District Court for final disposition of any
pending matters. If Nguyen is aggrieved after the District Court
acts on the contempt finding and possible sanctions, she may
appeal to the Federal Circuit.
I. BACKGROUND
As mentioned above, in February 2017, Fraunhofer filed a
patent infringements lawsuit against Sirius XM in the United
States District Court for the District of Delaware. See
Fraunhofer-Gesellschaft zur Förderung der Angewandten
Forschung E.V. v. Sirius XM Radio Inc., No. 1:17-cv-00184
(D. Del. Feb. 22, 2017). Fraunhofer then subpoenaed Sirius
XM’s former Chief Marketing Officer My-Chau Nguyen for
her testimony in a deposition scheduled for December 11,
2020. Joint Appendix (“JA”) 625-27.
Nguyen, who resided in the Washington, DC area, did not
appear for her deposition on December 11, 2020. This
prompted the parties to file motions in the District Court for the

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District of Columbia. On February 19, 2021, Nguyen filed a
motion to quash the subpoena. On March 5, 2021, Fraunhofer
responded with a cross-motion to compel Nguyen’s deposition
and a motion for sanctions.
On December 7, 2021, the District Court denied Nguyen’s
motion to quash, granted in part and held in abeyance in part
Fraunhofer’s cross-motion to compel, and ordered Nguyen to
sit for a deposition. Nguyen v. Fraunhofer-Gesellschaft Zur
Forderung Der Angewandten Forschung E.V., No. 21-0014,
2021 WL 5800741 (D.D.C. Dec. 7, 2021). Moreover, having
found no adequate excuse for Nguyen to disobey the subpoena
in the first instance, the District Court found Nguyen in
contempt, id. at *4, and it expressed an intent to enter sanctions,
id. However, the District Court decided to “defer ruling on
sanctions until Fraunhofer submits documentation on fees and
costs.” Id. Accordingly, it ordered Fraunhofer to “submit to the
Court documentation reflecting the fees and costs it incurred to
move to compel Petitioner's compliance with the subpoena, up
to and including the deposition itself,” noting that “[f]ailure to
submit this documentation may result in the denial of
sanctions.” Id. at *5.
Complying with the District Court’s order, Nguyen sat for
deposition on January 5, 2022. On January 6, 2022, she
appealed the District Court’s orders, challenging both the order
compelling her deposition as well as the contempt citation and
intent to enter sanctions.
After Nguyen noticed her appeal, Fraunhofer submitted
documentation regarding its fees to the District Court. January
26, 2022, Nguyen filed a request with the District Court to
respond to the reasonableness of Fraunhofer’s fees and the
adequacy of its documentation. However, the District Court

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held in abeyance the fee dispute pending resolution of this
appeal.
II. ANALYSIS
A. Standard of Review
In situations in which the court has jurisdiction to entertain
an appeal, it will review for abuse of discretion District Court
discovery orders granting or denying motions to compel, as
well as findings of civil contempt. See Laborers' Int'l Union of
N. Am. v. U.S. Dep't of Just., 772 F.2d 919, 921 (D.C. Cir.
1984); Int’l Ass’n of Machinists & Aerospace Workers, AFL-
CIO v. E. Airlines, Inc., 849 F.2d 1481, 1486 (D.C. Cir. 1988).
However, this court will not address the merits of any such
matters if the case is moot, Nichols v. Pierce, 740 F.2d 1249,
1260 (D.C. Cir. 1984), or if the matters on appeal are within
the exclusive jurisdiction of another court, see Ortiz v.
Fibreboard Corp., 527 U.S. 815, 816 (1999) (“Ordinarily, of
course, this or any other Article III court must be sure of its
own jurisdiction before getting to the merits.”).
B. The Two Matters Raised in This Appeal
We bifurcate Nguyen’s appeal into a challenge to the
District Court’s order compelling her deposition and a
challenge to the District Court’s contempt finding and intent to
enter sanctions. We will address these matters in order.
We first hold that we have no jurisdiction to consider
Nguyen’s appeal of the order compelling her deposition
because the matter is moot. We likewise hold that we have no
jurisdiction to assess Nguyen’s challenges to the District
Court’s contempt finding and intent to award sanctions because

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these are matters within the exclusive jurisdiction of the United
States Court of Appeals for the Federal Circuit.
C. Deposition Order
“Numerous courts have held that an appeal from
enforcement of a subpoena becomes moot once the party has
complied with the subpoena.” Office of Thrift Supervision
Dep't of Treasury v. Dobbs, 931 F.2d 956, 957 (D.C. Cir.
1991); see also United States v. Arthur Andersen & Co., 623
F.2d 720, 722 (1st Cir. 1980) cert. denied, 449 U.S. 1021
(1980) (Because appellant “has produced all of the documents
forming the subject matter of this appeal, the controversy
presented to this court appears, on its face, to be moot.”);
Richmark Corp. v. Timber Falling Consultants, 959 F.2d 1468,
1479 (9th Cir. 1992) (“Compliance with a discovery order
renders moot an appeal of that order.”); Baldridge v. United
States, 406 F.2d 526, 527 (5th Cir. 1969) (Where appellant
complied with the court order enforcing subpoena, “[t]here is
nothing on this appeal for this Court to decide. The case is
moot.”).
By sitting for her deposition on January 5, 2022, Nguyen
complied with the District Court’s order compelling her
deposition. Because she complied with that order, her appeal
of that order is moot and we lack jurisdiction to consider it.
D. Contempt Citation
As noted above, we have no authority to address Nguyen’s
challenges to the District Court’s contempt finding and intent
to award sanctions. These are matters for the Federal Circuit to
address if a proper appeal reaches that court. And we have no
authority to transfer these claims to the Federal Circuit because,
under Federal Circuit law, the contempt finding and intent to

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award sanctions are not final and appealable until the District
Court enters a judgment on sanctions. We thus dismiss this part
of Nguyen’s appeal for want of jurisdiction. If the District
Court enters judgment on sanctions, the contempt finding and
sanctions order may be appealable to the Federal Circuit.
1. Exclusive Jurisdiction Lies with the Federal Circuit
The Federal Circuit is vested with exclusive jurisdiction “of
an appeal from a final decision of a district court . . . in any
civil action arising under . . . any Act of Congress relating to
patents[.]” 28 U.S.C. § 1295(a)(1) (2012). Our sister circuits
have held that this exclusive jurisdiction encompasses appeals
of discovery orders ancillary to a patent suit. See McCook
Metals LLC v. Alcoa, Inc., 249 F.3d 330, 332 (4th Cir. 2001)
(holding that review of ancillary discovery proceeding to
enforce subpoena in connection with underlying patent matter
must proceed in the Federal Circuit); Dorf & Stanton
Commc'ns, Inc. v. Molson Breweries, 56 F.3d 13, 14-15 (2d
Cir. 1995) (noting Federal Circuit’s exclusive jurisdiction
“extends to appeals from appealable orders in ancillary
discovery proceedings”); Solarex Corp. v. Arco Solar, Inc., 870
F.2d 642, 643 (Fed. Cir. 1989) (“This court, rather than a
regional circuit, has jurisdiction over” an ancillary discovery
dispute “because the underlying litigation is a patent suit under
28 U.S.C. § 1338(a) (1982).”). As the Fourth Circuit
recognized:
Although it is true that the ancillary court's first-layer
authority derives from Federal Rules of Civil
Procedure 37(a)(1) and 45, which assign to it the
responsibility of issuing and enforcing subpoenas in its
district, Rules 37 and 45 do not confer subject matter
jurisdiction upon the courts. Rather, an ancillary
court's power to issue and enforce subpoenas is entirely

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dependent upon the jurisdiction of the court in which
the underlying action is pending.
McCook Metals, 249 F.3d at 334.
Because federal courts are courts of limited jurisdiction,
the discovery dispute in the District of Columbia District Court
must have arisen under some statute conferring jurisdiction.
Nguyen has not identified any such source of subject matter
jurisdiction, other than by piggybacking on the jurisdiction of
the underlying action in the District of Delaware. It is
undisputed that the underlying litigation between Fraunhofer
and Sirius XM in the District of Delaware arises under an Act
of Congress relating to patents. That makes Nguyen’s dispute
in the District of Columbia District Court a discovery
proceeding ancillary to a patent suit. We therefore join our
sister circuits and hold that exclusive jurisdiction of Nguyen’s
appeal of the contempt citation and intent to award sanctions
from that ancillary discovery proceeding lies with the Federal
Circuit.
Contrary to Nguyen’s suggestion, nothing in the
amendment to 28 U.S.C. § 1295 changes this analysis. The
current version of the statute vests the Federal Circuit with
exclusive jurisdiction of an appeal from a final district court
decision in “any civil action arising under . . . any Act of
Congress relating to patents[.]” 28 U.S.C. § 1295(a)(1) (2012).
The prior version vested the Federal Circuit with exclusive
jurisdiction of an appeal from a final district court decision “if
the jurisdiction of that court was based, in whole or in part, on
section 1338 of this title[.]” 28 U.S.C. § 1295(a)(1) (2006).
Section 1338 in turn grants the federal district courts original
jurisdiction of, inter alia, “any civil action arising under any
Act of Congress relating to patents[.]” 28 U.S.C. § 1338(a).
Because the underlying action in the District of Delaware arises

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under an Act of Congress relating to patents, the prior version
of Section 1295 is functionally equivalent to the current version
of Section 1295 for purposes of this appeal. See Hudson
Furniture, Inc. v. Lighting Design Wholesalers Inc., No. 20-
3299, 2021 WL 6105489, at *1 n.1 (2d Cir. Dec. 21, 2021)
(“[W]e see no reason that the revised language [of Section
1295] would alter the grounds for Federal Circuit jurisdiction
over appeals from district courts.”).
Thus, the appeal of the contempt finding and intent to
award sanctions belongs to the Federal Circuit.
2. Transfer Is Inappropriate
Nguyen requests that, if we find that exclusive jurisdiction
lies with the Federal Circuit, we transfer her appeal to the
Federal Circuit. In pressing this request, Nguyen relies on 28
U.S.C. § 1631, which states that if a “court finds that there is a
want of jurisdiction, the court shall, if it is in the interest of
justice, transfer such action or appeal to any other such court in
which the action or appeal could have been brought at the time
it was filed or noticed.”
Even if we assume that transfer would be in the interest of
justice, we deny Nguyen’s request to transfer because we find
this appeal could not have been brought in the Federal Circuit
at the time when it was noticed in this court.
We apply Federal Circuit law to determine whether
Nguyen’s appeal could have been brought at the time it was
noticed. See McCook Metals, 249 F.3d at 335-36 (applying
Federal Circuit law to transfer analysis). The purpose of
Section 1631 is to functionally recreate a situation in which the
litigation was brought in the proper court – here the Federal
Circuit – at the outset. Had this appeal been brought in the

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Federal Circuit at the outset, the Federal Circuit would have
applied its own law to determine whether it could hear the
appeal. See Int'l Elec. Tech. Corp. v. Hughes Aircraft Co., 476
F.3d 1329, 1330 (Fed. Cir. 2007) (“We apply our own law,
rather than regional circuit law, to questions relating to our own
appellate jurisdiction.”).
Under established precedent, Nguyen could not have
sought review in the Federal Circuit of the District Court’s
contempt finding and concomitant intent to award sanctions.
The Federal Circuit has held that a contempt order is not
appealable “where no sanction ha[s] yet been imposed for that
contempt and proceedings with respect to that question
remain[] ongoing at the time the appeal before us [i]s filed.”
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 759 F.3d
1333, 1340 (Fed. Cir. 2014) (quoting Aevoe Corp. v. AE Tech
Co., 727 F.3d 1375, 1380-81 (Fed. Cir. 2013)); see also LMK
Enterprises, Inc. v. Perma-Liner Indus., Inc., 423 F. App'x 972,
973 (Fed. Cir. 2011) (“As a general rule, an adjudication of
civil contempt, such as here, is not appealable until sanctions
have been imposed.”); Seiko Epson Corp. v. Nu-Kote Int'l, Inc.,
190 F.3d 1360, 1369 (Fed. Cir. 1999) (citing Hoffman v. Beer
Drivers & Salesmen's Local Union No. 888, 536 F.2d 1268,
1273 (9th Cir. 1976), for the proposition that a “contempt order
[was] deemed [a] final order and appealable when the fines
assessed were ordered to be paid”).
Similarly, the Federal Circuit has held that a “district
court's decision granting sanctions is a separate order which is
not final and appealable until the district court has decided the
amount of sanctions.” Orenshteyn v. Citrix Sys., Inc., 691 F.3d
1356, 1358 (Fed. Cir. 2012); see also View Eng'g, Inc. v.
Robotic Vision Sys., Inc., 115 F.3d 962, 964-65 (Fed. Cir. 1997)
(dismissing appeal of Rule 11 sanctions order where “district
court has not yet determined the [sanction] amount”).

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Here, although the District Court found Nguyen in
contempt, it had not yet entered a sanctions award when the
appeal was filed because Fraunhofer had not submitted
documentation of the fees it incurred. Indeed, the District Court
expressly noted that “[f]ailure to submit this documentation
may result in the denial of sanctions.” Nguyen, 2021 WL
5800741, at *5. Because no sanctions award has been issued
since the District Court’s contempt finding, the contempt
finding and intent to award sanctions are not final and
appealable under Federal Circuit law. Therefore, we have no
authority to transfer Nguyen’s appeal to the Federal Circuit
under 28 U.S.C. § 1631.
III. CONCLUSION
For the reasons set forth above, we dismiss this appeal for
want of jurisdiction. The case will be remanded to the District
Court for final disposition of any pending matters. If Nguyen
is aggrieved after the District Court acts on the contempt
finding and possible sanctions, she may seek to appeal to the
Federal Circuit.
So ordered.

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