Roberts, In re

• Decision Date: 11 May 1988
• Docket Number: No. 120,120
• Citation: 6 USPQ2d 1772,846 F.2d 1360
• Parties: , 6 U.S.P.Q.2d 1772 In re Peter M. ROBERTS. Misc.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1360

846 F.2d 1360

56 USLW 2680, 6 U.S.P.Q.2d 1772

In re Peter M. ROBERTS.

Misc. No. 120.

United States Court of Appeals, Federal Circuit.

May 11, 1988.

John B. Davidson, Louis G. Davidson & Associates, Ltd., Chicago, Ill., argued for petitioner. Also on the brief were Charles Alan Wright, Austin, Tex., Geoffrey P. Miller, Chicago, Ill. and George H. Gerstman, Pigott & Gerstman, Chicago, Ill., of counsel.

James G. Hunter, Jr., Latham & Watkins, Chicago, Ill., argued for respondent. With him on the brief was Elpidio R. Villarreal. Also on the brief was Charles S. Treat, Latham & Watkins, of Los Angeles, Cal.

Before MARKEY, Chief Judge, FRIEDMAN, ^* RICH, DAVIS, SMITH, NIES, NEWMAN, BISSELL, ARCHER, MAYER, and MICHEL, ^* Circuit Judges, and BALDWIN, Senior Circuit Judge.

ORDER

MARKEY, Chief Judge.

Peter M. Roberts (Roberts) petitions under 28 U.S.C. Sec. 1651 for a writ of mandamus ordering the district court to (1) disobey a mandate and order for a new trial issued December 21, 1983 by the United States Court of Appeals for the Seventh Circuit; (2) reinstate a verdict returned on April 2, 1982; and (3) enter judgment for Roberts nunc pro tunc the date of that verdict, including a $5 million jury award and $3,190,254 increased damages with interest and prejudgment interest. Sears, Roebuck and Co. (Sears) moves to dismiss the petition for lack of jurisdiction in this court. We will grant the motion.

Background

Protracted and extensive litigation between the parties is reflected in four decisions: Roberts v. Sears, Roebuck & Co., 573 F.2d 976, 197 USPQ 516 (7th Cir.) (Roberts I ), cert. denied, 439 U.S. 860, 99 S.Ct. 179, 58 L.Ed.2d 168 (1978); Roberts v. Sears, Roebuck & Co., 617 F.2d 460, 205 USPQ 788 (7th Cir.) (Roberts II ) cert. denied, 449 U.S. 975, 101 S.Ct. 386, 66 L.Ed.2d 237 (1980); Roberts v. Sears, Roebuck & Co., 697 F.2d 796, 217 USPQ 675 (7th Cir.1983) (Roberts III ); Roberts v. Sears, Roebuck & Co., 723 F.2d 1324, 221 USPQ 504 (7th Cir.1983) (Roberts IV ). In Roberts III, a panel of the Seventh Circuit viewed Roberts' patent as invalid and reversed the judgment entered on the verdict Roberts now seeks to reinstate. In Roberts IV, the Seventh Circuit sitting en banc vacated the decision in Roberts III and ordered a new trial.

Having greatly benefited from the decision in Roberts IV, Roberts nonetheless filed in this court on April 29, 1985 a first petition for the writ here sought. A panel of this court denied that petition on November 25, 1985, noting that Sears had raised "other grounds" that the district court might find sufficient to warrant a new trial. After the panel denied Roberts' petition for rehearing, and the district court declined to rule on those "other grounds," Roberts again petitioned for mandamus. The panel of this court granted the petition to the extent of ordering the district court to make the determination respecting other grounds, indicating that an affirmative determination would render the petition moot and would thus avoid any need for this court to decide the petition on its merits. When the district court, while noting the unusual nature of the procedure, determined that no additional ground warranted a new trial, Roberts filed the present petition. ¹

Sears suggested in banc determination of its motion to dismiss. This court accepted that suggestion, and sua sponte elected to consider the petition in banc if the motion were not granted.

Jurisdiction

The mandamus statute, 28 U.S.C. Sec. 1651, is not a grant of jurisdiction. Rosenbaum v. Bauer, 120 U.S. 450, 7 S.Ct. 633, 30 L.Ed. 743 (1887); In re Innotron Diagnostics, 800 F.2d 1077, 1081, 231 USPQ 178, 181 (Fed.Cir.1986); C. Wright, A. Miller, E. Cooper & E. Gressman, Federal Practice and Procedure, Sec. 3932, at 184-85 (1977). There must, therefore, be some other basis for jurisdiction before an appellate court may grant the particular writ sought by a petition for mandamus.

This court is a co-equal member of a system of thirteen appellate courts arranged in a single tier. It is not a superior member possessed of jurisdiction to review and reverse the judgments of the other twelve. Roberts has not shown that this court has been granted jurisdiction to engage in appellate review or rehearing of a final decision, or to recall or countermand a mandate, of a coordinate court of appeals. Indeed, Roberts refuses fully to recognize that this court would have to have been granted such jurisdiction before it could grant the particular writ he seeks.

Roberts makes no substantive response to Sears' motion to dismiss. He merely states, without more, that this court: (1) "has jurisdiction to hear a petition directed to a district court in a patent case;" (2) has "exercised jurisdiction in a preliminary way" over his earlier petitions; and (3) has "power to decide the question now presented to it by virtue of the All Writs Act." Roberts simply quotes the Act and notes the reference there to "all writs necessary or appropriate in aid of their respective jurisdictions." 28 U.S.C. Sec. 1651(a). He then cites without discussion four cases, none of which involved a writ even remotely similar to the one sought here.

Roberts' difficulty is: (1) the "patent case" over which Roberts seeks to have this court exercise jurisdiction is finished and was exclusively within the jurisdiction of the Seventh Circuit; (2) neither order relating to Roberts' earlier petitions dealt with the question of jurisdiction; and (3) Roberts has pointed to no case over which this court would have jurisdiction "in aid of" which the particular writ he seeks would be "necessary or appropriate."

The judgment Roberts seeks to have this court reinstate is one from which a notice of appeal was filed before October 1, 1982, and over which the Seventh Circuit had and has exercised exclusive jurisdiction. Federal Courts Improvement Act of 1982, Pub.L. 97-164, Sec. 403(e), 96 Stat. 25, 58. That judgment was reviewed entirely in accord with the statute. This court's jurisdiction is limited under Section 403(e) to review of judgments in relation to which a notice of appeal is filed after October 1, 1982. Central Soya Co. v. Geo. A. Hormel & Co., 723 F.2d 1573, 1580, 220 USPQ 490, 495 (Fed.Cir.1983). Nothing whatever in the statute creating this court gave it jurisdiction to reach back and redo anything done by a coordinate court of appeals. On the contrary, Congress expressly foreclosed such action by this court in Section 403(e). ² If the district court conducts a new trial, this court would have jurisdiction over any appeal from a judgment entered after that trial. That is a mere possibility, however, and is irrelevant here. Roberts raises no issue involving a new trial and does not here seek a prospective remedy in respect of a new trial; he seeks the retroactive remedy of avoiding a new trial altogether. Similarly, the particular writ sought by Roberts would have nothing to do with the conduct of any trial or affect any judgment over which this court would have appellate jurisdiction. Granting the writ he asks, therefore, could not possibly aid our jurisdiction. On the contrary, the particular writ sought by Roberts would deprive this court of any such opportunity by foreclosing a trial and judgment in relation to which a proper post-October 1982 notice of appeal might be filed.

The incongruity of Roberts' notion that this court has jurisdiction to order disobedience to the Seventh Circuit's mandate to conduct a new trial if Roberts wants one is illustrated by the intolerable result of any such order. Unlike the authority to reconsider its own rulings, a district court is without choice in obeying the mandate of the appellate court. Roberts ignores the compulsory nature of the Mandate Rule. See Northern Helex Co. v. United States, 634 F.2d 557, 560, 225 Ct.Cl. 194 (1980) and cases there cited. In suggesting that the potential for appeal to a different court modifies the Mandate Rule in some unspecified way, Roberts ignores the holding in United States v. United States Dist. Court, 334 U.S. 258, 264-65, 68 S.Ct. 1035, 1038, 92 L.Ed. 1351 (1948) (appellate court mandate compulsory on district court, even though subsequent appeal would go directly to Supreme Court). ³ If this court were to issue the order Roberts seeks, that order would confront the district court with a direct and intolerable conflict between two orders, one of which it must disobey. It would also constitute an unauthorized interference by this court with the duty of the district court to comply with the duly issued mandate of the Seventh Circuit, a mandate that court has not recalled. Neither this nor any circuit court other than the Court of Appeals for the Seventh Circuit has been granted jurisdiction to recall the mandate issued in Roberts IV.

Accordingly, IT IS ORDERED:

That the petition for mandamus be dismissed.

DAVIS, Circuit Judge, with whom SMITH, Circuit Judge, joins in part, dissenting in part.

I would hold that (i) this court has jurisdiction to consider Roberts' mandamus petition but (ii) I would deny that petition because of its lack of merit. In that sense I concur in the result of Chief Judge Markey's order.

I. Jurisdiction

For me the most significant factor is that in Roberts IV the Seventh Circuit did not finally decide the case but rather ordered a new trial. Everyone agrees that the judgment entered after that new trial will be appealable only to this court. Section 403(e) of the Federal Courts Improvement Act limiting this court's jurisdiction to a notice of appeal filed after October 1, 1982, will not apply because the judgment after the new trial ordered by the Seventh Circuit will necessarily be entered after that date. The statute authorizing us to issue a writ of mandamus, 28 U.S.C. Sec. 1651, gives us the authority to issue "all writs necessary or appropriate in aid of [our] respective jurisdiction[s]." In appropriate circumstances, it would be in...