Laitram Corp. v. NEC Corp.

• Decision Date: 03 June 1997
• Docket Number: 96-1480,Nos. 96-1468,s. 96-1468
• Citation: 42 USPQ2d 1897,115 F.3d 947
• Parties: LAITRAM CORPORATION, Plaintiff/Cross-Appellant, v. NEC CORPORATION and NEC Technologies Inc., Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 947

115 F.3d 947

42 U.S.P.Q.2d 1897

LAITRAM CORPORATION, Plaintiff/Cross-Appellant, v. NEC CORPORATION and NEC Technologies Inc., Defendants-Appellants.

Nos. 96-1468, 96-1480.

United States Court of Appeals Federal Circuit.

June 3, 1997.

Phillip A. Wittmann, Stone, Pigman, Walther, Wittmann & Hutchinson, L.L.P., New Orleans, Louisiana, argued for plaintiff/cross-appellant. With him on the brief was Steven W. Usdin. Also with him on the brief were Timothy J. Malloy, Lawrence M. Jarvis, Gregory J. Vogler, and Sharon A John M. Calimafde, Hopgood, Calimafde, Kalil & Judlowe, L.L.P., New York City, argued for defendants-appellants. With him on the brief was Marvin N. Gordon.

Hwang, McAndrews, Held & Malloy, Ltd., Chicago, Illinois.

Before MICHEL, PLAGER, and LOURIE, Circuit Judges.

MICHEL, Circuit Judge.

NEC Corporation and NEC Technologies, Inc. ("NEC") appeal the denial of their motion pursuant to Fed.R.Civ.P. 60(b) for relief from judgment of damages for patent infringement entered by the United States District Court for the Eastern District of Louisiana, Civil Action No. 89-1571. As it had previously, NEC again sought rulings on two undecided post-trial motions for Judgment as a Matter of Law ("JMOL"), one concerning willfulness and the other whether the reexamined claims were identical to the original claims, but the district court held that our prior mandate precluded its ruling on the motions. Laitram Corporation ("Laitram") cross-appeals (1) the denial of enhanced damages; (2) the denial of attorney fees; and (3) the use of the U.S. Treasury bill rate, compounded annually, for the calculation of pre-judgment interest. The appeal was submitted for decision following oral argument on April 8, 1997.

Because the district court misinterpreted this court's mandate from a prior appeal, we reverse the denial of the Rule 60(b) motion and remand the case for a ruling on the JMOL motion on claim identicality. And because no abuse of discretion was shown in the denials of enhanced damages or attorney fees, nor in the rate used for the calculation of pre-judgment interest, we affirm all three rulings which are the subjects of the cross-appeal. On mootness grounds, however, we also vacate the finding of willfulness and direct the district court to dismiss the JMOL motion on willfulness.

BACKGROUND

Laitram, owner of U.S. Patent No. 3,952,311 (" '311 patent"), filed suit against NEC for patent infringement on April 10, 1989. When a third party instituted a reexamination, the infringement suit was stayed for the duration of the reexamination proceeding. During the course of the reexamination, two claims were amended. The amended claims were allowed, and a Reexamination Certificate issued on March 27, 1990. The amended claims were asserted against NEC.

NEC then filed a motion for partial summary judgment in the district court arguing that the scope of the reexamination claims had been substantively enlarged over the original claims so that damages would only be available for the period following the Reexamination Certificate date (the "claim identicality" issue). The district court granted the motion, but this court reversed the grant of summary judgment and ordered that the issue proceed to trial. Laitram Corp. v. NEC Corp., 952 F.2d 1357, 21 USPQ2d 1276 (Fed.Cir.1991) ("Laitram I ").

When the suit went to trial, the jury found infringement, willfulness, and that the reexamination claims were identical to the original claims (thus, damages were available from the original issue date). NEC timely filed separate motions for JMOL pursuant to Fed.R.Civ.P. 50(b) on the issues of (1) infringement, (2) willfulness, and (3) claim identicality. JMOL of non-infringement alone was granted. In light of that grant, the separate motions for JMOL on the issues of willfulness and claim identicality were "denied," not on the merits, but "as moot."

Laitram appealed the grant of JMOL of non-infringement. This court reversed the grant and remanded "with instructions to reinstate the jury's verdict." Laitram Corp. v. NEC Corp., 62 F.3d 1388, 1395, 36 USPQ2d 1206, 1211 (Fed.Cir.1995) ("Laitram II "). The willfulness and claim identicality issues had neither been appealed, nor briefed nor argued by either party. Neither were they discussed in our opinion. The mandate issued August 25, 1995.

On September 8, 1995, NEC argued in a telephone status conference with the district judge that the willfulness and claim identicality issues, timely raised in the original JMOL motions but never decided on the merits, were no longer moot and must be decided.

Laitram opposed this request, arguing that all issues raised at any time had been disposed of by our mandate to reinstate the jury verdict and, alternatively, that NEC had waived these two issues.

NEC wrote to the Clerk of this court on September 12, and September 26, 1995, requesting clarification of the mandate. These requests were denied without opinion. NEC concurrently filed a Rule 60(b) motion in the district court, requesting relief from the denial as moot of its timely JMOL motions on willfulness and claim identicality, arguing that our court's mandate to reinstate the jury verdict of infringement rendered the motions no longer moot, but needing decision before final judgment could be entered. In effect, NEC argued it was entitled to decisions on the merits.

The district court denied the Rule 60(b) motion on December 21, 1995, reasoning that, as the mandate explicitly required reinstatement of "the jury verdict," it must mean the entire verdict. Therefore, it reasoned, the other two issues must also have been implicitly decided on appeal, adversely to NEC. In the alternative, the district court ruled that NEC's failure to raise the issues during Laitram's appeal in Laitram II or file a cross-appeal constituted waiver.

Following determination of damages, final judgment was entered on July 2, 1996. Liability was assigned for the full period and damages were considered for enhancement, but not actually enhanced, without ever ruling on the motions for JMOL. The district court, therefore, never determined whether the findings of claim identicality and willfulness were supported by substantial evidence and otherwise in accordance with law.

DECISION

I. Standard of Review

The parties disagree as to the appropriate standard of appellate review. Laitram asserts that the issue here is simply the denial of the Rule 60(b) motion which is reviewable only for abuse of discretion. See Browder v. Director, Dep't of Corrections of Ill., 434 U.S. 257, 263 n. 7, 98 S.Ct. 556, 560 n. 7, 54 L.Ed.2d 521 (1978). NEC argues, however, that the dispositive issue on this Rule 60(b) motion is the interpretation of this court's mandate in Laitram II, a question of law, subject to de novo review. While NEC does not cite authority directly supporting its view, it argues that mandate interpretation should be treated the same as interpretations of such trial court orders as consent orders, consent judgments, and consent decrees, all of which have been held reviewable de novo. See, e.g., Kenny v. Quigg, 820 F.2d 665, 670 (4th Cir.1987) (consent order); Turner v. Orr, 759 F.2d 817, 821 (11th Cir.1985) (consent judgment); United States v. National Steel Corp., 767 F.2d 1176, 1183 (6th Cir.1985) (consent decree).

We agree with NEC that the interpretation by an appellate court of its own mandate is properly considered a question of law, reviewable de novo. We give much weight to the uniform treatment of other types of decrees and judgments by trial courts as reviewed de novo. Since here we interpret our own, not a trial court's order, it seems all the clearer that no deference is due. Thus, it is no surprise that de novo review appears to be the standard of review that several Circuit Courts of Appeals have adopted. See Ginett v. Computer Task Group, Inc., 11 F.3d 359, 361 (2d Cir.1993) ("the appellate court retains the power to determine whether the terms of the mandate have been 'scrupulously and fully carried out' " (citation omitted)); Burton v. Johnson, 975 F.2d 690, 693 (10th Cir.1992) ("[appellate] court is vested with the authority to interpret its own mandate"); Ad-Vantage Tel. Directory Consultants, Inc. v. GTE Directories Corp., 943 F.2d 1511, 1517 (11th Cir.1991) (no deference shown to trial court interpretation of appellate court mandate); Caldwell v. Puget Sound Elec. Apprenticeship & Training Trust, 824 F.2d 765, 767 (9th Cir.1987) (no deference shown to trial court interpretation of appellate court mandate). Furthermore, the Supreme Court has noted, "either upon an application for a writ of mandamus or upon a new appeal it is for this court to construe its own mandate, and to act accordingly." In re Sanford Fork & Tool Co., 160 U.S. 247, 256, 16 S.Ct. 291, 293, 40 L.Ed. 414 (1895). Logically, if the Supreme Court has plenary power to construe its own mandate, so must this court. Further, judicial rulings, like statutes, are official legal instruments of the sovereign. Generally, all such instruments--whether trial court orders or appellate court mandates--are reviewed de novo on appeal. It offends common sense, moreover, to suggest that we must defer to what a trial judge inferred about our intent in what we wrote.

We hold, therefore, that the standard of review for the interpretation of this like any other appellate court mandate is plenary. Thus, we must determine whether the district court misconstrued our mandate when it held that the mandate decided not only infringement, but also willfulness and claim identicality.

II. Interpretation of the mandate in Laitram II

"Upon return of its mandate, the district court cannot give relief beyond the scope of that mandate, but it may act on 'matters left open by the mandate.' " Caldwell, 824 F.2d at 767 (quoting Sanford, 160 U.S. at 256, 16 S.Ct. at 294). Therefore, the critical question in determining whether the district court had the...