Chaparral Communications, Inc. v. Boman Industries, Inc.

• Decision Date: 28 July 1986
• Docket Number: No. 86-1061,86-1061
• Citation: 230 USPQ 535,798 F.2d 456
• Parties: CHAPARRAL COMMUNICATIONS, INC., Appellant, v. BOMAN INDUSTRIES, INC., Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 456

798 F.2d 456

230 U.S.P.Q. 535

CHAPARRAL COMMUNICATIONS, INC., Appellant, v. BOMAN INDUSTRIES, INC., Appellee.

Appeal No. 86-1061.

United States Court of Appeals Federal Circuit.

July 28, 1986.

Lewis H. Eslinger and William Pelton, of Eslinger and Pelton, of New York City, for appellant.

Russell R. Palmer, Jr., of Christie, Parker & Hale, Pasadena, Cal., for appellee.

Before MARKEY, Chief Judge, FRIEDMAN and ARCHER, Circuit Judges.

ORDER

ARCHER, Circuit Judge.

Background

The court has before it the following motions and documents submitted by the parties:

(1) A motion by Boman Industries, Inc. (Boman) to dismiss;

(2) The response of Chaparral Communications, Inc. (Chaparral) in opposition to Boman's motion to dismiss;

(3) Boman's motion for leave to file a reply to Chaparral's opposition, with reply attached; and

(4) Chaparral's opposition to Boman's motion for leave or, in the alternative, its motion to file a surreply, with surreply attached.

Boman moves for dismissal of this appeal on the grounds that the partial summary judgment appealed from is not a final judgment from which an appeal lies and because determination under Rule 54(b) of the Federal Rules of Civil Procedure was expressly denied by the district court. Chaparral contends that the court has appellate jurisdiction over the appeal under 28 U.S.C. Sec. 1292(a)(1), (c)(1) (1982) because the decision appealed from implicitly denied injunctive relief.

The partial summary judgment of the district court being appealed held that Chaparral's design patent was unenforceable due to inequitable conduct, that Chaparral's trademark claims were waived by a settlement agreement in an earlier action, and that Chaparral pay Boman's attorney fees incurred with regard to the design patent and trademark claims. The district court reserved for trial Chaparral's utility patent and unfair competition claims. It also denied Chaparral's motion for a Rule 54(b) determination and this appeal followed.

Discussion

In general, this court reviews only final orders and decisions of a district court. 28 U.S.C. Sec. 1295(a)(1) (1982). The adjudication of fewer than all the claims in a multi-claim action in the district court is not final unless the district court makes an express determination under Rule 54(b) that there is no just reason for delay and an express direction for the entry of judgment. Chaparral here sought a Rule 54(b) determination from the district court and was denied.

Chaparral admits, therefore, that the only possible source of jurisdiction here is our authority to consider interlocutory orders or decrees under Sec. 1292(a), (c). In an attempt to jump this hurdle, Chaparral argues that the partial summary judgment had the effect of denying its request for injunctive relief. We find that Chaparral's position is unsupported by the facts and the law.

It is clear that a specific order denying an injunction is not required for appealability under Sec. 1292. The court will look to the substance of the order, not merely its label. General Electric Co. v. Marvel Rare Metals Co., 287 U.S. 430, 53 S.Ct. 202, 77 L.Ed.2d 408 (1932) (counterclaim for injunctive relief dismissed on jurisdictional grounds); Electronic Data Systems Federal Corp. v. General Services Administration, Board of Contract Appeals, 792 F.2d 1569 (Fed.Cir.1986) (grant of stay deemed to have effect of preliminary injunction); Rhone-Poulenc Specialties Chimiques v. SCM Corp., 769 F.2d 1569 (Fed.Cir.1985) (denial of stay to permit arbitration). In each of these cases, injunctive-type relief was clearly at issue although the order was not specifically denominated as the grant or denial of an injunction.

Moreover, in applying this principle, the guidance of the Supreme Court in Carson v. American Brands, Inc., 450 U.S. 79, 101 S.Ct. 993, 67 L.Ed.2d 59 (1981), must be followed. The Supreme Court stated:

For an interlocutory order to be immediately appealable under Sec. 1292(a)(1), however, a litigant must show more than that the order has the practical effect of refusing an injunction. Because Sec. 1292(a)(1) was intended to carve out only a limited exception to the final-judgment rule, we have construed the statute narrowly to ensure that appeal as of right under Sec. 1292(a)(1) will be available only in circumstances where an appeal will further the statutory purpose of permit[ting] litigants to effectually challenge interlocutory orders of serious, perhaps irreparable, consequence. Baltimore Contractors, Inc. v. Bodinger, supra, at 181 [348 U.S. 176, 75 S.Ct. 249, 99 L.Ed. 233 (1955) ]. Unless a litigant can show that an interlocutory order of the district court might have 'serious, perhaps irreparable, consequence,' and that the order can be 'effectually challenged' only by immediate appeal, the general congressional policy against piecemeal review will preclude interlocutory appeal.

450 U.S. at 84, 101 S.Ct. at 997; see also Switzerland Cheese Association, Inc. v. E. Horne's Market, Inc., 385 U.S. 23, 87 S.Ct. 193, 17 L.Ed.2d 23 (1966).

This court, in Holmes v. Bendix Corp., 713 F.2d 792 (Fed.Cir.1983), was confronted with facts very similar to the instant case. The district court had granted summary judgment on licensing issues but left several other issues unresolved. One of the parties appealed contending, on appeal, that the judgment would deprive it of injunctive relief. The court dismissed the appeal, reasoning:

None of the motions [for summary judgment and cross-motions] alerted the judge that he was passing on injunctive relief indirectly.... For this reason, we think an appellant from an interlocutory adverse Rule 56 decision at least must point out something he said or did to alert the court that it would be passing...