Registration Control Systems, Inc. v. Compusystems, Inc., 90-1213

• Decision Date: 20 December 1990
• Docket Number: No. 90-1213,90-1213
• Citation: 17 USPQ2d 1212,922 F.2d 805
• Parties: REGISTRATION CONTROL SYSTEMS, INC., Appellant, v. COMPUSYSTEMS, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 805

922 F.2d 805

17 U.S.P.Q.2d 1212

REGISTRATION CONTROL SYSTEMS, INC., Appellant, v. COMPUSYSTEMS, INC., Appellee.

No. 90-1213.

United States Court of Appeals Federal Circuit.

Dec. 20, 1990.

Harold E. Wurst, Nilsson, Robbins, Dalgarn, Berliner, Carson & Wurst, Los Angeles, Cal., argued, for appellant. With him on the brief was Jai Ho Rho, Los Angeles, Cal.

Charles G. Call, Allegretti & Witcoff, Ltd., Boston, Mass., argued, for appellee. Bradley J. Hulbert, Allegretti & Witcoff, Ltd., Chicago, Ill., of counsel.

Before ARCHER, PLAGER and CLEVENGER, Circuit Judges.

CLEVENGER, Circuit Judge.

Registration Control Systems, Inc. ("Registration"), appeals the summary judgment declaring the claims of U.S. Patent No. 4,233,661 ("661") invalid for obviousness. Registration Control Sys., Inc. v. Compusystems, Inc., No. 83-C-3516, 1988 WL 112224 (N.D.Ill. Jan. 20, 1990). We vacate and remand for factual determinations on a jurisdictional issue.

I

Registration, the assignee of the patent-in-suit, filed a complaint in 1983 alleging infringement by Compusystems, Inc. ("Compusystems"). After mutual consent to a trial presided over by a Magistrate, with infringement conceded, the jury returned a verdict form that found the 661 claims "valid," the amount of damages to be $3 million, and infringement to be wilful. Judgment on the jury verdict was entered on November 21, 1988. On November 30, 1988, nine days after entry of judgment, Compusystems filed a motion for a new trial that stated in full:

Defendant, CompuSystems, submits that the verdict resulting from the trial by jury in the above-identified action is against the manifest weight of the evidence. Accordingly, pursuant to Federal Rule of Civil Procedure 59, CompuSystems moves for a new trial on all issues.

CompuSystems has not yet received a complete transcript for the trial. CompuSystems will file a memorandum in support of the present motion for a new trial upon receipt and review of the complete transcript. Thus, CompuSystems requests the Court's leave to file its supporting memorandum on or before December 21, 1988.

In due course, the Magistrate received extensive memoranda in support of, and in opposition to, the motion for a new trial, and on July 20, 1989, the motion was granted. Shortly thereafter, Compusystems filed a motion for summary judgment contending that the claims were invalid, as a matter of law, under Sec. 103, which the Magistrate granted.

II

On appeal, Registration contends for the first time that Compusystems' motion for a new trial was fatally defective under Federal Rule of Civil Procedure 7, which requires motions to "state with particularity the grounds therefor, and ... set forth the relief or order sought." Registration argues that "against the manifest weight of the evidence" as the grounds of the instant motion lacks particularity and that a prayer for a new trial "on all issues" is legally insufficient. Registration thus asserts that the Magistrate lacked jurisdiction to hear both Compusystems' motion for new trial and its consequently untimely motion for summary judgment.

In response, Compusystems contends that its motion for a new trial was sufficiently particular to place Registration on notice of the relief sought and the particular grounds upon which Compusystems relied, and therefore was legally sufficient. Alternatively, Compusystems contends, citing Roy v. Volkswagenwerk-Aktiengesellschaft, 781 F.2d 670 (9th Cir.1985) for support that the timely-filed new trial motion acted to preserve the jurisdiction of the district court to rule on the basis of detailed argument presented in the later-filed memorandum in support of the motion.

In the alternative, Registration argues on the merits that (1) the Magistrate abused his discretion in granting a new trial, (2) that the issue of "obviousness" of claim 2 of the 661 patent had been waived by Compusystems during trial, and (3) that the Magistrate erred as a matter of law in deciding on summary judgment that the claims were invalid for obviousness. Compusystems vigorously asserts the contrary on each point.

III

We agree that the issue before us is jurisdictional. If Compusystems' original motion for a new trial was not sufficiently particular or did not have the effect of preserving the district court's jurisdiction to act on the basis of a later-filed memorandum that is conceded to be particular, the Magistrate could not have retained jurisdiction to enter final summary judgment and we would not have jurisdiction to hear an appeal filed 22 days after entry of that judgment. Under the Federal Rules, an untimely post-judgment motion can "not toll the running of the time to appeal" and therefore the appellate court "lack[s] jurisdiction to review the [subsequent] order." Browder v. Director, Dep't of Corrections, 434 U.S. 257, 265, 98 S.Ct. 556, 561, 54 L.Ed.2d 521 (1977). As the issue is jurisdictional to us, Registration cannot be charged with having waived the argument by failing to raise it prior to briefing in this appeal as it is black letter law that parties may not waive a defect in jurisdiction by consent. See Pennsylvania v. Union Gas Co., 490 U.S. 920, 109 S.Ct. 2273, 2287, 105 L.Ed.2d 1 (1989) (Stevens, J., concurring).

The exact issue before us is whether the District Court retained jurisdiction under its procedural rules to decide the motion for summary judgment. When considering issues not specific to our statutory jurisdiction, we have followed the law of the regional circuit, here the Seventh Circuit. Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422, 1438-40, 223 USPQ 1074, 1086-87 (Fed.Cir.1984) (in banc) (copyright infringement); United States v. One 1979 Cadillac Coupe de Ville, 833 F.2d 994, 997-98 (Fed.Cir.1987) (Tucker Act); Sun-Tek Ind. v. Kennedy Sky-Lites, Inc., 856 F.2d 173 (Fed.Cir.1988) (finality of order reducing supersedeas bond). In their briefs and at oral argument, the parties conceded, and we agree, that there is no controlling precedent from either the Supreme Court or the Seventh Circuit construing the parameters of Rule 7's requirement for particularity or indicating whether a timely motion for a new trial, failing in particularity, can preserve the district court's jurisdiction to measure the legal adequacy of the motion by a later-filed, detailed elaboration of the ground for the motion.

IV

A motion for a new trial is included among the four motions that operate to toll the time for filing an appeal. Fed.R.App.P. 4(a)(4). Fed.R.Civ.P. 59 sets forth the grounds for a motion for a new trial:

(a) Grounds. A new trial may be granted to all or any of the parties and on all or part of the issues (1) in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States....

The substantive requirements that define the contents of any motion are found in Rule 7(b)(1) which requires that "[a]n application to the court for an order shall be by motion which, unless made during a hearing or trial, shall be in writing, shall state with particularity the grounds therefor, and shall set forth the relief or order sought."

The purpose of the particularity requirement in Rule 7 is to afford notice of the grounds and prayer of the motion to both the court and to the opposing party, providing that party with a meaningful opportunity to respond and the court with enough information to process the motion correctly. Wright and Miller state that the issue is whether any party is prejudiced by a lack of particularity or "whether the court can comprehend the basis for the motion and deal with it fairly." 5 Wright & Miller, Federal Practice and Procedure Sec. 1192, 42 (1990). Professor Moore notes that "[t]he particularity requirement is flexible, however, and non-particularized motions have been allowed where the opposing party knew or had notice of the particular grounds being relied upon." 2A Moore's Federal Practice p 7.05, 7-16 (1990). "And while barren assertions such as 'contrary to law' and 'not sustained by the evidence' are insufficient to circumvent compliance, reasonable specification is all that the requirement for particularity imposes." Id. (citations omitted).

Decisions on the particularity requirements illustrate flexibility in application of the rule and recognition of the peculiar circumstances of the case. For instance, in Stinebower v. Scala, 331 F.2d 366, 367 (7th Cir.1964), grounds such as "[t]he Court erred in striking portions of plaintiff's complaint," "[t]he Court erred in admitting evidence which should have been excluded," "[t]he Court erred in rejecting certain instructions tendered on behalf of the plaintiff," "[t]he Court erred in giving certain instructions on behalf of defendant," and "[t]he charge of the Court on the law applicable to the facts in the case was orally given and misleading and confusing to the jury," were held to be "vague, indefinite and lack[ing in] the specificity required by Rule 7(b)(1)." In St. Mary's Hosp. v. Heckler, 753 F.2d 1362, 1365 (7th Cir.1985), the Government's motion, identifying "two specific errors in reasoning" and requesting that the court "modify or clarify its remand order" was found both to set forth the relief requested and to state the grounds with sufficient particularity. In United States v. 64.88 Acres of Land, 25 F.R.D. 88, 89 (C.D.Pa.1960), a motion requesting a new trial because "[t]he verdict is excessive" was held to be "sufficient in and of itself to raise the issue as to whether the verdict may be permitted under the evidence." We conclude, and agree with Professor Moore, that it is a "motion's substance, and not merely its linguistic form, that determines its nature and legal effect." 2A Moore's Federal Practice p 7.05, at 7-17 (1990).

However, as with other issues that raise questions about the underlying facts that establish jurisdiction,...