W.L. Gore & Associates, Inc. v. International Medical Prosthetics Research Associates, Inc., s. 90-1489

• Decision Date: 16 September 1992
• Docket Number: 90-1490,Nos. 90-1489,s. 90-1489
• Citation: 975 F.2d 858,24 USPQ2d 1195
• Parties: W.L. GORE & ASSOCIATES, INC. and Gore Enterprise Holdings, Inc., Plaintiffs/Counterdefendants-Appellants, v. INTERNATIONAL MEDICAL PROSTHETICS RESEARCH ASSOCIATES, INC., also known as IMPRA, Inc., Defendant/Counterclaimant-Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 858

975 F.2d 858

24 U.S.P.Q.2d 1195

W.L. GORE & ASSOCIATES, INC. and Gore Enterprise Holdings Inc., Plaintiffs/Counterdefendants-Appellants, v. INTERNATIONAL MEDICAL PROSTHETICS RESEARCH ASSOCIATES, INC. also known as IMPRA, Inc. Defendant/Counterclaimant-Cross-Appellant.

Nos. 90-1489, 90-1490.

United States Court of Appeals Federal Circuit.

Sept. 16, 1992.

David H. Pfeffer, J. Robert Dailey, Janet Dore and Stephen R. Smith, Morgan & Finnegan, New York City, represented plaintiffs/counterdefendants-appellants. Of counsel was John S. Campbell, W.L. Gore & Associates, Inc., Newark, Del.

Gerald D.W. North, Gerald D.W. North & Associates, Phoenix, Ariz., represented defendant/counterclaimant-cross-appellant. Of counsel were James F. Polese, Polese, Heiner & Nolan, Phoenix, Ariz. and Dale M. Heist, Woodcock, Washburn, Kurtz, MacKiewicz & Norris, Philadelphia, Pa.

ON MOTION FOR RECONSIDERATION

Before, ARCHER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and MICHEL, Circuit Judge.

MICHEL, Circuit Judge.

ORDER

W.L. Gore & Associates, Inc., et al. (Gore), move for reconsideration of the court's April 28, 1992 order dismissing appeal nos. 90-1489 and 90-1490 for lack of jurisdiction. W.L. Gore & Assoc., Inc. v. International Medical Prosthetics Research Assoc., Inc., No. 90-1489, -1490 (Fed.Cir. Apr. 28, 1992). International Medical Prosthetics Research Associates, Inc. (IMPRA) opposes. Because our dismissal of the appeals was based upon an erroneous conclusion that the district court had not yet finally adjudicated the patent infringement claim because it had ruled on some but not all defenses, we vacate the order and reinstate the appeals.

I. BACKGROUND

Gore filed a complaint against IMPRA in the United States District Court for the District of Arizona alleging infringement of Gore's U.S. Patent No. 4,187,390 covering "vascular grafts and other products made from expanded polytetrafluoroethylene ["Teflon" ]." IMPRA denied that it infringed the patent and raised affirmative defenses of, inter alia, patent invalidity, laches, estoppel, inequitable conduct, and patent misuse. In addition to its affirmative defenses, IMPRA asserted a multi-count antitrust counterclaim.

The district court bifurcated IMPRA's patent misuse defense and its antitrust counterclaim from Gore's infringement claim and IMPRA's other affirmative defenses. Trial proceeded on the infringement claim and the affirmative defenses, less the patent misuse defense. Trial of the antitrust counterclaim is scheduled for some time after February 1994. The patent misuse defense remains unadjudicated.

On July 10, 1990, the district court entered judgment against Gore, finding that IMPRA did not infringe Gore's patent. In addition, the district court determined, inter alia, that the patent was invalid under 35 U.S.C. §§ 102, 103 & 112 p 1 and that Gore was subject to laches. At Gore's request, the district court certified the judgment pursuant to Fed.R.Civ.P. 54(b). Gore appealed and IMPRA cross-appealed.

Gore filed a motion to dismiss the cross-appeal or to limit the scope of the cross-appeal. ¹ In response to this motion, IMPRA suggested that this court consider whether it has jurisdiction over the appeals, arguing that the pending patent misuse affirmative defense and the antitrust counterclaim render the judgment nonfinal because the unadjudicated issues do not constitute a "separate claim" as required by Rule 54(b). The court ordered the parties to submit briefs on the propriety of the district court's certification. IMPRA urged dismissal of the appeals based on an improper certification under Rule 54(b).

On April 28, 1992, the court dismissed the appeals for lack of jurisdiction, concluding that the district court had not completely adjudicated a single claim and therefore improperly certified the judgment as "final" pursuant to Rule 54(b). In reaching this conclusion this court relied primarily on the conclusion that Gore's infringement claim and IMPRA's patent misuse defense constituted a single claim for relief and the misuse defense was not adjudicated.

On reconsideration, Gore reiterates its argument that once the district court held Gore's patent invalid and the claims not infringed, the patent misuse defense was "wholly superfluous and immaterial" because Gore's infringement claim was "completely extinguished." Gore asserts that the district court properly certified its judgment as final under Rule 54(b) "notwithstanding the presence of the unadjudicated patent misuse issues and antitrust counterclaims." IMPRA responds by arguing that the district court's Rule 54(b) certification "was in no way meant to moot or otherwise affect IMPRA's right to a trial on the patent misuse defense."

II. DISCUSSION

A. What Law Applies

The first question presented in this motion for reconsideration is what law governs our review of the district court's certification under Rule 54(b). IMPRA argues that appealability under Rule 54(b) is jurisdictional and therefore Federal Circuit law should apply. In support of this argument, IMPRA relies upon Woodard v. Sage, 818 F.2d 841, 2 USPQ2d 1649 (Fed.Cir.1987) (in banc), which states:

While in some matters of procedural or substantive law this circuit has concluded that we will follow the law as interpreted by the circuit in which the district court is located, such deference is inappropriate on issues of our own appellate jurisdiction. This court has the duty to determine its jurisdiction and to satisfy itself that an appeal is properly before it.

Id. at 844, 2 USPQ2d at 1651 (citation omitted).

Gore argues that because appealability under Rule 54(b) is not unique to patent law, regional circuit law--Ninth Circuit law in this case--should apply. Gore cites Snellman v. Ricoh, 836 F.2d 528, 5 USPQ2d 1341 (Fed.Cir.1987), which states:

Because construction of the Federal Rules of Civil Procedure is a matter not unique to patent law, we would normally apply the law of the regional circuit in which the district court sits, here the Ninth Circuit.

Id. at 533, 5 USPQ2d at 1345.

Basically, we are faced with the difficult question of which circuit's law governs when our jurisdiction turns on the construction of "final," a term always implicated in determining appellate jurisdiction, when that term is used in a federal rule of civil procedure. However, because the Supreme Court has provided adequate guidance to resolve the issues presented in this motion for reconsideration, we need not and do not answer this question. The Supreme Court case law governs no matter which circuit's law we would otherwise apply. To the extent Supreme Court precedent does not address each subissue and where neither Ninth Circuit nor Federal Circuit case law provides any guidance, we look to the law of all circuits equally for persuasive reasoning.

B. Origins of Rule 54(b)

Appellate courts have historically disfavored piecemeal litigation and permitted appeals from complete and final judgments only. Catlin v. United States, 324 U.S. 229, 65 S.Ct. 631, 89 L.Ed. 911 (1945). Prior to the promulgation of the Federal Rules of Civil Procedure, generally "there was no authority for treating anything less than the whole case as a judicial unit for purposes of appeal." Sears, Roebuck & Co. v. Mackey, 351 U.S. 427, 432, 76 S.Ct. 895, 897, 100 L.Ed. 1297 (1956). ² However, the Federal Rules of Civil Procedure created increased opportunities for the liberal joinder of claims in multiple claim actions. Id. As a result, litigation became more complex and multiple claim actions became more common.

In the interests of sound judicial administration, Congress enacted Rule 54(b) to "relax[ ] the restrictions upon what should be treated as a judicial unit for the purposes of appellate jurisdiction." Id. Rule 54(b) allows a district court to sever an individual claim that has been finally resolved. Rule 54(b) acknowledges the policy that in multiple claim actions "some final decisions, on less than all of the claims, should be appealable without waiting for a final decision on all of the claims." Id. (emphasis in original).

C. Standard of Review

Rule 54(b) provides:

When more than one claim for relief is presented in an action, whether as a claim, counterclaim, cross-claim, or third-party claim, or when multiple parties are involved, the court may direct the entry of a final judgment as to one or more but fewer than all of the claims or parties only upon an express determination that there is no just reason for delay and upon an express direction for the entry of judgment.

Fed.R.Civ.P. 54. In order for Rule 54(b) to apply, the judgment must be final with respect to one or more claims. A judgment is not final for Rule 54(b) purposes unless it is "an ultimate disposition of an individual claim entered in the course of a multiple claims action." Sears, 351 U.S. at 436, 76 S.Ct. at 900 (emphasis added). Courts analyzing whether Rule 54(b) applies must focus on both the finality of the judgment and the separateness of the claims for relief. See id.

The requirement of finality is a statutory mandate and not a matter of discretion. See Liberty Mutual Ins. Co. v. Wetzel, 424 U.S. 737, 742, 96 S.Ct. 1202, 1206, 47 L.Ed.2d 435 (1976). The Supreme Court has rejected the view that the mere recitation of finality and "no just reason for delay" by the district court pursuant to Rule 54(b) automatically renders a judgment appealable as a final decision pursuant to 28 U.S.C. § 1291 (1988). ³ Id. Instead, when an appeal is certified pursuant to Rule 54(b), an appellate court should review the finality of the judgment de novo in order to assure itself that it has jurisdiction. See Sears, 351 U.S. at 437, 76 S.Ct. at 1203-04. While the district court's determination that there is no just reason for delay is reviewed under an abuse of discretion standard, the Supreme Court has emphasized that the "District Court cannot, in the exercise of its discretion,...