The U.S. Court of Appeals for the Federal Circuit dismissed for lack of jurisdiction the appeal of a summary judgment of no infringement where a counterclaim for declaratory judgment of invalidity was still pending. Pause Technology, LLC v. TiVo, Inc., Case No. 04-1263 (Fed. Cir., March 14, 2005) (Linn, J.).
Pause sued TiVo for infringement of its U.S. Reissue Patent No. 36,801. In addition to affirmative defenses, TiVo counterclaimed for a declaratory judgment of invalidity and non-infringement. Following claim construction, on TiVo’s motion for summary judgment, the district court found no infringement and entered judgment in favor of TiVo. Neither the district court’s order nor the docket sheet indicated the disposition of the invalidity counterclaim.
Pause appealed, stating in its opening brief that the judgment had been final. TiVo’s initial brief stated that the district court had not ruled on TiVo’s motion for summary judgment on invalidity, but that TiVo did not question appellate jurisdiction. The Federal Circuit requested additional briefing on the jurisdictional issue, citing the apparently unresolved counterclaim for invalidity. Pause argued that the district court had implicitly dismissed the invalidity counterclaim. TiVo disagreed with implicit dismissal and acknowledged that the invalidity counterclaim remained pending.
The Federal Circuit held that because the invalidity counterclaim remained unadjudicated before the district court, there was no final decision within the meaning of 28 U.S.C. § 1295(a)(1) and, therefore, no appellate jurisdiction. The Court rejected Pause’s theory of implicit dismissal, stating that even if the district court had implicitly disposed of TiVo’s invalidity defense, the invalidity counterclaim was a separate claim that remained unresolved. The Federal Circuit stated that parties too frequently do not review the actions of district courts for finality before lodging appeals, resulting in needless delay and inefficiency. It further warned, "our court will insist upon diligent compliance by counsel with the rule of finality."
As it had no jurisdiction, the Federal Circuit dismissed the appeal. However, it granted Pause the opportunity to seek remedial action with the district court and reinstate the appeal without further briefing if Pause could obtain certification of partial judgment pursuant to Federal Rule of Civil Procedure 54(b).
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