Pause Technology LLC v. Tivo Inc.

• Citation: 401 F.3d 1290
• Decision Date: 14 March 2005
• Docket Number: No. 04-1263.,04-1263.
• Parties: PAUSE TECHNOLOGY LLC, Plaintiff-Appellant, v. TIVO INC., Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1290

401 F.3d 1290

PAUSE TECHNOLOGY LLC, Plaintiff-Appellant, v. TIVO INC., Defendant-Appellee.

No. 04-1263.

United States Court of Appeals, Federal Circuit.

March 14, 2005.

Joseph A. Micallef, Arnold & Porter LLP, of Washington, DC, argued for plaintiff-appellant. Of counsel were Joel M. Freed, Robert Worrall and Matthew Bathon.

Perry Goldberg, Irell & Manella LLP, of Los Angeles, California, argued for defendant-appellee. With him on the brief were Morgan Chu and Alexander C.D. Giza.

Before NEWMAN, LOURIE, and LINN, Circuit Judges.

LINN, Circuit Judge.

Pause Technology LLC ("Pause") appeals from a judgment entered by the United States District Court for the District of Massachusetts, in favor of TiVo Inc. ("TiVo"), following entry of summary judgment that TiVo's digital video recorder ("DVR") products 2.0 and above do not infringe U.S. Reissue Patent No. 36,801 ("the '801 reissue patent"). Pause Tech. LLC v. TiVo Inc., No. 01-11657-PBS (D.Mass. Feb. 9, 2004) ("Order"). Because TiVo's invalidity counterclaim remains unadjudicated before the district court, the present appeal is not from a final decision within the meaning of 28 U.S.C. § 1295(a)(1). Therefore, this court lacks jurisdiction, and the appeal is dismissed subject to reinstatement on the conditions set forth in this opinion.

I. BACKGROUND

On September 25, 2001, Pause filed suit in the United States District Court for the District of Massachusetts against TiVo alleging that TiVo's DVR technology infringed certain claims of the '801 reissue patent. On December 26, 2001, TiVo raised affirmative defenses of invalidity and non-infringement and counterclaimed for a declaratory judgment of invalidity and non-infringement. (Answer and Countercl. at 2-3.) Pause's claims of infringement implicate two classes of TiVo's DVR technology. One class runs software versions below version 2.0, and the other class runs version 2.0 and above.

On February 2, 2004, in a Memorandum and Order, the district court, noting that "TiVo move[d] for summary judgment of non-infringement and invalidity with respect to versions 2.0 and above," construed two claim limitations and "allow [ed] TiVo's motion for summary judgment of noninfringement." Pause Tech. LLC v. TiVo Inc., No. 01-11657-PBS, slip op. at 1, 22-23 (D.Mass. Feb. 2, 2004) ("Memorandum"). On February 6, 2004, the district court entered judgment. Pause Tech. LLC v. TiVo Inc., No. 01-11657-PBS (D.Mass. Feb. 6, 2004). On February 9, 2004, the district court entered a one-page amended judgment (to correct a typographical error), which stated:

Pursuant to this Court's Memorandum and Order dated February 2, 2004, allowing TiVo's Motion for Summary Judgment on non-infringement with respect to products 2.0 and above, it is ORDERED and ADJUDGED that judgment is hereby entered in favor of the defendant TiVo.¹

Order. Although the district court's docket sheet designated the case terminated on March 1, 2004, neither the docket sheet nor the record indicates the district court's disposition of the invalidity counterclaim.

On March 3, 2004, Pause filed a notice of appeal to this court. Neither party's brief indicate the disposition of the invalidity counterclaim. Pause's "Jurisdictional Statement" says that "[t]his is an appeal from a final judgment of the district court entered on February 6, 2004, and [the Federal Circuit] has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1)." TiVo's principal brief states that "[the district court] did not rule on TiVo's motion for summary judgment of invalidity," but TiVo does not question this court's jurisdiction. On December 27, 2004, this court cited the apparently unresolved counterclaim and issued an order to "show cause as to why th[e] appeal should not be dismissed for lack of jurisdiction" under Nystrom v. TREX Co., 339 F.3d 1347 (Fed.Cir.2003). Pause Tech. LLC v. TiVo Inc., No. 04-1263 (Fed.Cir. Dec. 27, 2004).

In its supplemental brief, Pause argues that this court has jurisdiction under 28 U.S.C. § 1295(a)(1) because the district court ordered judgment in favor of TiVo on February 6, 2004, and because the docket sheet shows that the case was dismissed. Pause contends that the district court implicitly dismissed the invalidity counterclaim as moot. In the alternative, Pause asks that we give the parties leave to ask the district court for a supplemental order clarifying the disposition of the lawsuit and, upon a showing that the judgment is final, that we reinstate the appeal in accordance with the procedure followed in Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1297 n. 1 (Fed.Cir.2003). TiVo, on the other hand, acknowledges that its counterclaim remains pending before the district court, expresses regret that it did not earlier recognize the jurisdictional issue, and contends that we have no jurisdiction under Nystrom. TiVo disagrees with Pause's argument that the district court implicitly dismissed the invalidity counterclaim.

On January 13, 2005, the court heard oral argument and explored with the parties the jurisdictional issue related to the invalidity counterclaim and the merits of the appeal. The court now concludes that the appeal is not from a final judgment and that the court has no jurisdiction.

II. ANALYSIS

A. Standard of Review

Whether this court has jurisdiction over an appeal taken from a district court decision is a question of law which we address in the first instance. See Nystrom, 339 F.3d at 1349-50.

B. Jurisdiction and Finality

"Federal courts are not courts of general jurisdiction; they have only the power that is authorized by Article III of the Constitution and the statutes enacted by Congress pursuant thereto.... For that reason, every federal appellate court has a special obligation to satisfy itself ... of its own jurisdiction...." Bender v. Williamsport Area Sch. Dist., 475 U.S. 534, 541, 106 S.Ct. 1326, 89 L.Ed.2d 501 (1986) (internal quotation marks and citations omitted); see also Kinetic Builder's, Inc. v. Peters, 226 F.3d 1307, 1311-12 (Fed.Cir.2000). In doing so, we are obligated to consider whether there is a final judgment of the district court, 28 U.S.C. § 1295(a)(1) (2000), or a basis for jurisdiction over an interlocutory order, id. § 1292(c). See also Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1362 (Fed.Cir.2003); Syntex Pharms. Int'l, Ltd. v. K-Line Pharms., Ltd., 905 F.2d 1525, 1526 (Fed.Cir.1990). On matters relating to this court's jurisdiction, we apply Federal Circuit law, not that of the regional circuit from which the case arose. See H.R. Techs., Inc. v. Astechnologies, Inc., 275 F.3d 1378, 1382 (Fed.Cir.2002); State Contracting & Eng'g Corp. v. Fla., 258 F.3d 1329, 1334 (Fed.Cir.2001); Woodard v. Sage Prods., Inc., 818 F.2d 841, 844 (Fed.Cir.1987) (en banc).

"This court's `final judgment rule,' as applied to patent disputes arising under 28 U.S.C. § 1338, is set forth at 28 U.S.C. § 1295. Section 1295's final judgment rule mirrors that of its counterpart found at 28 U.S.C. § 1291." Nystrom, 339 F.3d at 1350. Under the rule, parties may only appeal a "final decision of a district court." 28 U.S.C. § 1295(a)(1). In Catlin v. United States, the Supreme Court defined a final judgment as a decision by the district court that "ends the litigation on the merits and leaves nothing for the court to do but execute the judgment." 324 U.S. 229, 233, 65 S.Ct. 631, 89 L.Ed. 911 (1945); see also Coopers & Lybrand v. Livesay, 437 U.S. 463, 467, 98 S.Ct. 2454, 57 L.Ed.2d 351 (1978). By requiring parties to "raise all claims of error in a single appeal following final judgment on the merits," Firestone Tire & Rubber Co. v. Risjord, 449 U.S. 368, 374, 101 S.Ct. 669, 66 L.Ed.2d 571 (1981), § 1295, like its counterpart § 1291, "forbid[s] piecemeal disposition on appeal of what for practical purposes is a single controversy...." Cobbledick v. United States, 309 U.S. 323, 325, 60 S.Ct. 540, 84 L.Ed. 783 (1940). The Supreme Court has further explained that this final judgment rule

emphasizes the deference that appellate courts owe to the trial judge as the individual initially called upon to decide the many questions of law and fact that occur in the course of a trial. Permitting piecemeal appeals would undermine the independence of the district judge, as well as the special role that individual plays in our judicial system. In addition, the rule is in accordance with the sensible policy of "avoid[ing] the obstruction to just claims that would come from permitting the harassment and cost of a succession of separate appeals from the various rulings to which a litigation may give rise, from its initiation to entry of judgment." The rule also serves the important purpose of promoting efficient judicial administration.

Firestone, 449 U.S. at 374, 101 S.Ct. 669 (internal citations omitted).

As we observed in Nystrom, apart from appeals from judgments that are "final except for an accounting" under 28 U.S.C. § 1292(c)(2),

the rules of finality that define the jurisdiction of this court do not contain special provisions for patent cases or admit to exceptions for strategic reasons or otherwise, short of meeting the conditions specified in Rule 54(b) or 28 U.S.C. § 1292(b), (c)(1). Thus, piecemeal litigation is as strictly precluded by the rule of finality for patent cases as it is for any other case. Until the rules are changed, the parties and the district courts are obliged to conclude patent cases in strict compliance with the finality rule to avoid unnecessary litigation over jurisdictional issues in perfecting an appeal.

339 F.3d at 1350.

C. Discussion

Despite our repeated admonitions, this court again confronts an appeal with a jurisdictional defect. For whatever the reasons, parties too frequently are not reviewing the actions of the district courts for finality before lodging appeals. When such actions later are discovered to be not ripe for review, needless delay and inefficiency...