975 F.2d 858 (Fed. Cir. 1992), 90-1489, W.L. Gore & Associates, Inc. v. International Medical Prosthetics Research Associates, Inc.

Docket Nº90-1489, 90-1490.
Citation975 F.2d 858
Party Name24 U.S.P.Q.2d 1195 W.L. GORE & ASSOCIATES, INC. and Gore Enterprise Holdings, Inc., Plaintiffs/Counterdefendants-Appellants, v. INTERNATIONAL MEDICAL PROSTHETICS RESEARCH ASSOCIATES, INC., also known as IMPRA, Inc., Defendant/Counterclaimant-Cross-Appellant.
Case DateSeptember 16, 1992
CourtUnited States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 858

975 F.2d 858 (Fed. Cir. 1992)

24 U.S.P.Q.2d 1195

W.L. GORE & ASSOCIATES, INC. and Gore Enterprise Holdings,

Inc., Plaintiffs/Counterdefendants-Appellants,



also known as IMPRA, Inc.,


Nos. 90-1489, 90-1490.

United States Court of Appeals, Federal Circuit

September 16, 1992

Page 859

David H. Pfeffer, J. Robert Dailey, Janet Dore and Stephen R. Smith, Morgan & Finnegan, New York City, represented plaintiffs/counterdefendants-appellants. Of counsel was John S. Campbell, W.L. Gore & Associates, Inc., Newark, Del.

Gerald D.W. North, Gerald D.W. North & Associates, Phoenix, Ariz., represented defendant/counterclaimant-cross-appellant. Of counsel were James F. Polese, Polese, Heiner & Nolan, Phoenix, Ariz. and Dale M. Heist, Woodcock, Washburn, Kurtz, MacKiewicz & Norris, Philadelphia, Pa.


Before, ARCHER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and MICHEL, Circuit Judge.

MICHEL, Circuit Judge.


W.L. Gore & Associates, Inc., et al. (Gore), move for reconsideration of the court's April 28, 1992 order dismissing appeal nos. 90-1489 and 90-1490 for lack of

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jurisdiction. W.L. Gore & Assoc., Inc. v. International Medical Prosthetics Research Assoc., Inc., No. 90-1489, -1490 (Fed.Cir. Apr. 28, 1992). International Medical Prosthetics Research Associates, Inc. (IMPRA) opposes. Because our dismissal of the appeals was based upon an erroneous conclusion that the district court had not yet finally adjudicated the patent infringement claim because it had ruled on some but not all defenses, we vacate the order and reinstate the appeals.


Gore filed a complaint against IMPRA in the United States District Court for the District of Arizona alleging infringement of Gore's U.S. Patent No. 4,187,390 covering "vascular grafts and other products made from expanded polytetrafluoroethylene ["Teflon" ]." IMPRA denied that it infringed the patent and raised affirmative defenses of, inter alia, patent invalidity, laches, estoppel, inequitable conduct, and patent misuse. In addition to its affirmative defenses, IMPRA asserted a multi-count antitrust counterclaim.

The district court bifurcated IMPRA's patent misuse defense and its antitrust counterclaim from Gore's infringement claim and IMPRA's other affirmative defenses. Trial proceeded on the infringement claim and the affirmative defenses, less the patent misuse defense. Trial of the antitrust counterclaim is scheduled for some time after February 1994. The patent misuse defense remains unadjudicated.

On July 10, 1990, the district court entered judgment against Gore, finding that IMPRA did not infringe Gore's patent. In addition, the district court determined, inter alia, that the patent was invalid under 35 U.S.C. §§ 102, 103 & 112 p 1 and that Gore was subject to laches. At Gore's request, the district court certified the judgment pursuant to Fed.R.Civ.P. 54(b). Gore appealed and IMPRA cross-appealed.

Gore filed a motion to dismiss the cross-appeal or to limit the scope of the cross-appeal. 1 In response to this motion, IMPRA suggested that this court consider whether it has jurisdiction over the appeals, arguing that the pending patent misuse affirmative defense and the antitrust counterclaim render the judgment nonfinal because the unadjudicated issues do not constitute a "separate claim" as required by Rule 54(b). The court ordered the parties to submit briefs on the propriety of the district court's certification. IMPRA urged dismissal of the appeals based on an improper certification under Rule 54(b).

On April 28, 1992, the court dismissed the appeals for lack of jurisdiction, concluding that the district court had not completely adjudicated a single claim and therefore improperly certified the judgment as "final" pursuant to Rule 54(b). In reaching this conclusion this court relied primarily on the conclusion that Gore's infringement claim and IMPRA's patent misuse defense constituted a single claim for relief and the misuse defense was not adjudicated.

On reconsideration, Gore reiterates its argument that once the district court held Gore's patent invalid and the claims not infringed, the patent misuse defense was "wholly superfluous and immaterial" because Gore's infringement claim was "completely extinguished." Gore asserts that the district court properly certified its judgment as final under Rule 54(b) "notwithstanding the presence of the unadjudicated patent misuse issues and antitrust counterclaims." IMPRA responds by arguing that the district court's Rule 54(b) certification "was in no way meant to moot or otherwise affect IMPRA's right to a trial on the patent misuse defense."


  1. What Law Applies

    The first question presented in this motion for reconsideration is what law governs our review of the district court's certification under Rule 54(b). IMPRA argues that appealability under Rule 54(b) is jurisdictional

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    and therefore Federal Circuit law should apply. In support of this argument, IMPRA relies upon Woodard v. Sage, 818 F.2d 841, 2 USPQ2d 1649 (Fed.Cir.1987) (in banc), which states:

    While in some matters of procedural or substantive law this circuit has concluded that we will follow the law as interpreted by the circuit in which the district court is located, such deference is inappropriate on issues of our own appellate jurisdiction. This court has the duty to determine its jurisdiction and to satisfy itself that an appeal is properly before it.

    Id. at 844, 2 USPQ2d at 1651 (citation omitted).

    Gore argues that because appealability under Rule 54(b) is not unique to patent law, regional circuit law--Ninth Circuit law in this case--should apply. Gore cites Snellman...

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