Golden Blount, Inc. v. Robert H. Peterson Co.

• Citation: 438 F.3d 1354
• Decision Date: 15 February 2006
• Docket Number: No. 04-1609.,No. 05-1202.,No. 05-1141.,04-1609.,05-1141.,05-1202.
• Parties: GOLDEN BLOUNT, INC. Plaintiff-Appellee, v. ROBERT H. PETERSON CO., Defendant-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1354

438 F.3d 1354

GOLDEN BLOUNT, INC. Plaintiff-Appellee, v. ROBERT H. PETERSON CO., Defendant-Appellant.

No. 04-1609.

No. 05-1141.

No. 05-1202.

United States Court of Appeals, Federal Circuit.

February 15, 2006.

COPYRIGHT MATERIAL OMITTED

Charles W. Gaines, Hitt Gaines, P.C., of Richardson, Texas, argued for plaintiff-appellee. With him on the brief was Greg H. Parker. Of counsel on the brief was William D. Harris, Jr., Schultz & Associates, of Dallas, Texas.

Leland W. Hutchinson, Jr., Freeborn & Peters, of Chicago, Illinois, argued for defendant-appellant. With him on the brief were Jennifer L. Fitzgerald and David S. Becker.

Before MICHEL, Chief Judge, LOURIE, and LINN, Circuit Judges.

LINN, Circuit Judge.

Robert H. Peterson Co. ("Peterson") appeals from final orders finding that Peterson willfully infringed U.S Patent No. 5,988,159 ("the '159 patent"), and awarding Golden Blount damages and attorney fees. Golden Blount, Inc. v. Robert H. Peterson Co., No. 3-01-CV-0127-R (N.D.Tex. Dec. 15, 2004) (Final Judgment); Golden Blount, Inc. v. Robert H. Peterson Co., No. 3:01-CV-0127-R (N.D.Tex. Nov. 15, 2004) (Attorney Fees Order); Golden Blount, Inc. v. Robert H. Peterson Co., No. 3-01-CV-0127-R, 2004 WL 1960098 (N.D.Tex. Sept. 2, 2004) (Infringement Order). Because the district court did not clearly err in finding that Peterson willfully infringed the '159 patent, we affirm the district court's judgment of willful infringement and the award of attorney fees based principally thereon. However, because the district court did not address certain returned units in its calculation of damages, we vacate the damages award and remand that limited aspect of the case to the district court with instructions to reexamine the number of products sold and, if necessary, re-compute damages and enter judgment thereon consistent with this opinion.

I. BACKGROUND

On January 18, 2001, Golden Blount filed suit against Peterson for infringement of the '159 patent, which relates to fireplace burners and associated equipment. Beginning on July 29, 2002, the district court held a bench trial. On August 9, 2002, the district court found willful infringement, held that the claims were not invalid, awarded damages and attorney fees, and granted an injunction. Peterson appealed to this court and, in April 2004, we construed certain claims of the '159 patent, affirmed the validity determination, vacated the judgment as to infringement, and remanded for specific factual findings. See Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054 (Fed.Cir.2004) ("Golden Blount I"). Because we vacated the judgment with respect to all issues of infringement, we also vacated and remanded the judgment as to willfulness, the exceptional nature of the case, and damages. Id. at 1061.

In the district court on remand, both parties filed proposed findings of fact. On June 22, 2004, the district court adopted Peterson's proposed findings of non-infringement. On July 6, 2004, Golden Blount filed a motion under Rule 52(b) of the Federal Rules of Civil Procedure ("Rule") to amend the judgment, and alternatively, a Rule 59 motion for a new trial. On August 8, 2004, the district court granted Peterson's petition for attorney fees. However, on August 18, 2004, the district court heard oral argument on Golden Blount's Rule 52(b) motion and decided that "[it] made a mistake" in adopting Peterson's findings. From the bench, the district court vacated Peterson's findings and the award of attorney fees, and requested that Golden Blount provide "the necessary findings and necessary final judgment."

On August 31, 2004, Golden Blount submitted another set of proposed findings, which the district court adopted and entered on September 2, 2004. The district court found that Peterson both directly and indirectly infringed the '159 patent and that infringement was willful. The district court calculated lost-profit damages to be $429,256, trebled the award to $1,287,766, and awarded Golden Blount attorney fees and post-judgment interest.

On September 8, 2004, Golden Blount filed a formal application for attorney fees. On September 17, 2004, Peterson lodged an appeal from the August 18, 2004 order. On November 15, 2004, the district court calculated the amount of attorney fees to be $622,015. On December 9, 2004, Peterson appealed from the award of attorney fees. On December 15, 2004, the district court entered final judgment, and, on January 14, 2005, Peterson appealed from that order. On February 15, 2005, we consolidated the appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II. DISCUSSION

A. Preliminary Matters

Peterson argues that the district court clearly erred in vacating all of its June 22, 2004 findings because Golden Blount's Rule 52(b) motion only sought amendment of some of the findings and Golden Blount did not file another Rule 52(b) motion after August 18, 2004. Alternatively, Peterson argues that the district court lacked jurisdiction to enter the September 2, 2004 findings because the August 18, 2004 Minute Order was an appealable judgment that Golden Blount did not seek to amend within ten days as required by Rule 52(a). Peterson adds that, even if this court does not strike the September 2, 2004 findings it should apply greater scrutiny than "clear error" review because the district court adopted Golden Blount's findings verbatim.

Golden Blount counters that it need not have filed another Rule 52(b) motion with its August 31, 2004 proposed findings because its original Rule 52(b) motion was adequate and because it was complying with the district court's August 18, 2004 order. Golden Blount adds that the district court had jurisdiction to enter the September 2, 2004 findings because the August 18, 2004 order was not an appealable judgment and did not start the ten-day clock. Alternatively, Golden Blount asserts that the district court retained jurisdiction to change its judgment under Rule 60(b)(6). Golden Blount maintains that even if this court reviews the findings very closely because they were adopted verbatim, the standard that the court must apply is that of "clear error." We agree with Golden Blount.

Because the issue of whether the district court properly granted a Rule 52(b) motion to amend its findings is not unique to patent law, we apply regional circuit law, here, that of the Fifth Circuit. See Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1574-75 (Fed.Cir. 1984), overruled on other grounds by Richardson-Merrell Inc. v. Koller, 472 U.S. 424, 105 S.Ct. 2757, 86 L.Ed.2d 340 (1985). Although we could find no Fifth Circuit decision setting out the standard of review that is applied in that circuit to a district court's decision to amend its findings, we believe it reasonable to conclude that the Fifth Circuit would apply the abuse of discretion standard. 9 James Wm. Moore et al., Moore's Federal Practice ¶ 52.60[2], at 130 (3d ed. 2005) ("Moore's") ("The decision of whether to grant or deny a motion to amend or enlarge the findings is within the discretion of the trial court."); see Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 1336 (Fed.Cir.1998) (finding no abuse of discretion in the denial of a Rule 52(b) motion).

Rule 52(b) provides that "[o]n a party's motion filed no later than 10 days after entry of judgment, the court may amend its findings—or make additional findings—and may amend the judgment accordingly." Fed.R.Civ.P. 52(b). "[A] party may move to amend the findings of fact even if the modified or additional findings in effect reverse the judgment. If the trial court has entered an erroneous judgment, it should correct it." Fontenot v. Mesa Petroleum Co., 791 F.2d 1207, 1219 (5th Cir.1986) (internal quotations omitted); accord Nat'l Metal Finishing Co. v. BarclaysAmerican/Commercial, Inc., 899 F.2d 119, 123 (1st Cir.1990); 9 Moore's ¶ 52.60[1], at 130. Golden Blount filed its Rule 52(b) motion within 10 days of the entry of the June 22, 2004 findings, and called for the court to accept its "Amended Findings of Fact and Conclusions of Law," which were in most respects contrary to those made by the district court. Because the district court may reverse any or all of its findings in acting on a Rule 52(b) motion, see Fontenot, 791 F.2d at 1219; Nat'l Metal, 899 F.2d at 123, and because a Rule 52(b) motion provides the district court discretion to amend any of its own findings, see 9 Moore's ¶ 52.60[2], at 130-31, it matters not that Peterson's Rule 52(b) motion did not request all of the changes effected by the September 2, 2004 findings. The district court did not abuse its discretion in amending its findings and modifying its judgment accordingly. The cases to which Peterson cites are not germane.

Peterson's jurisdictional challenge also fails. The district court invited Golden Blount to submit additional findings and did not intend for the August 18, 2004 Minute Order to dispose of the pending Rule 52(b) motion. See McLaughlin v. Mississippi Power Co., 376 F.3d 344, 350-51 (5th Cir.2004) (finding that a district court order was not a final judgment because the district court did not intend to end the litigation with its order and continued to issue orders in the case); Pandrol USA, LP v. Airboss Ry. Prods., 320 F.3d 1354, 1362-63 (Fed.Cir.2003) (noting that "whether an order constitutes a final judgment depends upon whether the judge has or has not clearly declared his intention in this respect in his opinion" (internal quotations omitted)). Thus, the Minute Order was not a final, appealable order. As a result, the district court retained jurisdiction to enter the September 2, 2004 findings. See 9 Moore's ¶ 52.62[1]-[2], at 139-40 (noting that the district court retains jurisdiction while a timely-filed Rule 52(b) motion is pending). The fact that the Rule 59 motion for a new trial remained pending until December 15, 2004 further supports this conclusion. While Peterson...