Concept Design Electronics and Mfg., Inc. v. Duplitronics, Inc.

• Decision Date: 19 December 1996
• Docket Number: No. 96-1065,96-1065
• Parties: NOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. CONCEPT DESIGN ELECTRONICS AND MANUFACTURING, INC., Plaintiff-Appellee, v. DUPLITRONICS, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 376

104 F.3d 376

43 U.S.P.Q.2d 1114

NOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

CONCEPT DESIGN ELECTRONICS AND MANUFACTURING, INC., Plaintiff-Appellee, v. DUPLITRONICS, INC., Defendant-Appellant.

No. 96-1065.

United States Court of Appeals, Federal Circuit.

Dec. 19, 1996.

Before MAYER, MICHEL and SCHALL, Circuit Judges.

MICHEL, Circuit Judge.

Duplitronics, Inc. ("Duplitronics") appeals the September 11, 1995 Order of the United States District Court for the Western District of North Carolina denying its motion under Fed.R.Civ.P. 60(b)(6) to vacate the Final Judgment entered November 17, 1993 in favor of Concept Design Electronics and Manufacturing, Inc. ("Concept Design"), in light of the later issuance of this court's decision in Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed.Cir.1995), later unanimously affirmed by the Supreme Court, Markman v. Westview Instruments, Inc., 116 S.Ct. 1384, 38 USPQ2d 1461 (1996). The appeal was submitted for our decision following oral argument on July 9, 1996. Because we hold that, in accordance with applicable Fourth Circuit law, the district court erred in concluding that it lacked jurisdiction to hear the motion, but hold that the district court did not abuse its discretion and was legally correct when it ruled that entertaining the motion was barred by our prior decision in this case, which was law of the case, we affirm the district court's denial of the motion.

BACKGROUND

Concept Design filed an action seeking a declaratory judgment that two of Duplitronics' patents were invalid, unenforceable and not infringed; Duplitronics counterclaimed for infringement. The jury found that both patents were invalid and unenforceable and that Concept Design had not infringed. Duplitronics appealed, and on January 17, 1995, this court affirmed the judgment of the district court in a non-precedential decision. Concept Design Elecs. and Mfg., Inc. v. Duplitronics, Inc., 52 F.3d 342 (table), 34 USPQ2d 1789 (Fed.Cir.1995) (the "January 17 Decision"). ¹

In our January 17 opinion we reviewed and affirmed the jury's verdicts of invalidity and noninfringement under our then controlling precedent on claim construction of Tol-O-Matic, Inc. v. Proma Produkt-Und Marketing Gesellschaft m.b.H., 945 F.2d 1546, 1549, 20 USPQ2d 1332, 1335 (Fed.Cir.1991) (in reviewing a denial of JMOL motion, standard of review is whether there was substantial evidence to support the jury verdict). Duplitronics asserted during post-trial briefing in the district court and during the appeal that, rather than being a mixed question of law and fact, claim interpretation is a matter of law. It argued that the court erred by not construing the claims before submitting them to the jury for its determination of infringement and validity. In light of the applicable authority of Tol-O-Matic, neither the district court nor this court in the January 17 Decision was persuaded by that argument.

Following the decision in that appeal, on April 5, 1995, this court decided Markman in banc, holding that the court (rather than jury) has the "power and obligation to construe as a matter of law the meaning of language used in the patent claim" and that such construction is reviewed "de novo on appeal." Markman, 52 F.3d at 979.

On May 19, 1995, Duplitronics filed a petition for writ of certiorari in the United States Supreme Court, seeking review of the January 17 Decision in light of this court's in banc decision in Markman. Duplitronics argued in its petition that the Supreme Court should vacate the January 17 Decision and remand. It wrote in its petition that the Federal Circuit had "so far departed from the accepted and usual course of judicial proceedings ... as to call for an exercise of [the Supreme] Court's powers of supervision."

On August 17, 1995, while the petition for certiorari was pending in the Supreme Court, Duplitronics filed a motion in the district court under Fed.R.Civ.P. 60(b)(6) ² requesting vacation of the judgment and a new trial, again based on the in banc Markman decision.

On September 11, 1995, the district court denied the motion, reasoning that the January 17 Decision controlled the case and that the petition was still pending in the Supreme Court. It wrote:

The short answer to the Defendant's Motion is that the Federal Circuit has affirmed the Judgment by this Court [in the January 17 Decision] and denied the Defendant's request for rehearing [i]n banc.

....

[Duplitronics] now requests that this Court reverse the Federal Circuit's action in this case and short circuit any action by the Supreme Court on Defendant's Petition for a writ of certiorari. This the Court will not do. In sum, this Court does not have jurisdiction to consider Defendant's Motion and it will, therefore, be denied.

On September 29, 1995 Duplitronics timely filed notice of appeal of the district court's denial of the Rule 60(b) motion. On October 2, 1995, the Supreme Court denied Duplitronics' petition for certiorari.

On September 27, 1995, the Supreme Court granted certiorari in Markman, Markman v. Westview Instruments, Inc., 116 S.Ct. 40 (1995), and on April 23, 1996, affirmed, 116 S.Ct. at 1387 ("We hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.").

DISCUSSION

The sole issues before the court are: (1) whether the district court had jurisdiction over the Rule 60(b) motion despite the pending certiorari petition requesting remand to the Federal Circuit, and, (2) if so, whether the district court erred when it ruled that this court's January 17, 1995 Decision controlled, requiring denial of the Rule 60(b) motion before it.

I.

Although inconsistent with the district court's "denial," rather than "dismissal," of Duplitronics' motion to vacate the final judgment, the Order notes, "[T]his Court does not have jurisdiction to consider Defendant's motion" because of the certiorari petition pending at the time of the issuance of the Order. That is, even though the district court labeled the disposition a denial on the merits and addresses the merits in its Order, the district court indicated that it lacked jurisdiction to "consider Defendant's motion." We must then first consider whether the motion should have been dismissed for lack of jurisdiction.

While we decide issues relating to our own appellate jurisdiction in accordance with the law of this circuit, see Woodard v. Sage, 818 F.2d 841, 844, 2 USPQ2d 1649, 1651 (Fed.Cir.1987) (in banc), here our appellate jurisdiction is unquestioned and only the district court's jurisdiction is at issue. The issue of whether the district court properly had jurisdiction to entertain the Rule 60(b) motion while a petition for certiorari is pending involves construction of the Federal Rules of Civil Procedure in a matter not unique to patent law. Thus, in accordance with our precedent, we apply the law of the regional circuit in which the district court sits, here the Fourth Circuit. Amstar Corp. v. Envirotech Corp., 823 F.2d 1538, 1550, 3 USPQ2d 1412, 1421 (Fed.Cir.1987) ("Because denial of a Rule 60(b) motion is a procedural issue not unique to patent law, we apply the rule of the regional circuit...."); Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422, 1438-40, 223 USPQ 1074, 1086-87 (Fed.Cir.1984) (in banc).

The issue of the district court's jurisdiction in this case is whether our mandate and the pending certiorari petition stripped the district court of its ability to entertain the motion without leave from this court or from the Supreme Court. In Standard Oil Co. of California v. United States, 429 U.S. 17, 17-18 (1976) (per curiam), the Supreme Court held that "leave" from an appellate court, or in that case the Supreme Court, is not necessary in order for a litigant to file, or the district court to entertain, a motion under Rule 60(b) after the appellate court's mandate has issued. Thus, although our mandate had issued prior to Duplitronics' filing of the motion, leave from this court was unnecessary and the district court had jurisdiction to entertain the motion despite our mandate and the absence of leave from us.

The only question remaining, then, is the effect of the pending certiorari petition. Standard Oil implicitly left open, however, the question of whether appellate leave is required before a district court can entertain a Rule 60(b) motion when an appeal (or petition for certiorari) is still pending. Rule 60(b), unlike Rule 60(a) (which allows for correction of clerical mistakes in the record while the appeal is pending), is silent on the issue. Furthermore, the circuits appear to be in conflict on the issue. Compare Smith v. Lujan, 588 F.2d 1304, 1307 (9th Cir.1979), with Commonwealth of Puerto Rico v. S.S. Zoe Colocotroni, 601 F.2d 39, 41 (1st Cir.1979); see also 11 Charles A. Wright et al., Federal Practice and Procedure Civil § 2873 (2d ed. 1995) ("The effect of pending ... appeals on the power of the trial court to grant relief under Rule 60 is not free from doubt.").

The Fourth Circuit, though, has clearly adopted the rule that a district court may consider a Rule 60(b) motion without leave, and if it proposes to grant the motion pending appeal, it may seek remand from the appellate court. See Sine v. Local No. 992, Int'l Bhd. of Teamsters, 790 F.2d 1095, 1098 (4th Cir.1986); Patterson v. American Tobacco Co., 634 F.2d 744, 746 n. 1 (4th Cir.1980) (en banc). See also Stone v. Immigration and Naturalization Serv., 115 S.Ct. 1537, 1547 (1995) (dicta; "the filing of a Rule 60(b) motion does not toll the running of the time...