Green Edge Enterprises, LLC v. Rubber Mulch Etc., LLC , 450 F. App'x 978 ( 2011 )

NOTE: This order is nonprecedential
United States Court of Appeals
for the FederaI Circuit
GREEN EDGE ENTERPRISES, LLC,
Plaintiff/C'ounterclaim Defendant-Respondent, `
V.
RUBBER MULCH ETC., LLC AND GROUNDSCAPE
TECHNOLOGIES, LLC, '
Defendcmts / Counterclaimants,
AND
RUBBER RESOURCES, LTD., LLP,
Defendcmt/ C0unterclaimant-Petiti0n,er,
v.
INTERNATIONAL MULCH COMPANY AND
MICHAEL MILLER,
Counterclaim Defendants-Respondents,
AND
JUDY SMITH AND LEE GREENBERG,
C0unterclaim Defendcmts.
Misce11ane0us D0cket N0. 998
On Petiti0n for Permissi0n to Appea1 pursuant to
28 U.S.C. § 1292(b) from the United States District C0urt
GREEN EDGE V RUBBER MULCH 2
for the Eastern District of Missouri in case no. 02-CV-
0566, Magistrate Judge Terry I. Adelman.
ON PETITION FOR PERMISSION TO APPEAL
Before RA1)ER, Chief Judge, and LoURIE and BRYsoN,
C'ircuit Judges.
RADER, Chief Ju,dge.
ORDER
Rubber Resources, Ltd., LLP (Rubber Resources) peti-
tions for permission to appeal the order certified by the
United States District Court for the Eastern District of
Miss011ri under 28 U.S.C. § 1292(b). international Mulch
Company and Michael Miller (colleotively, IMC) oppose.
Rubber Resources replies. _
This petition stems from a patent infringement suit
brought by the patent holder, Green Edge Enterprises,
LLC, against Rubber Resources. Rubber Resources
brought a counterclaim against Green Edge and IMC, the
exclusive licensee of the patent, under the Lanham Act for
unfair trade practices, na1nely, that the patent had been
asserted in bad faith.
Prior to trial, IMC filed a motion in limine to exclude
evidence of patent enforcement activities, which was
granted by the district court. The district court explained
that "[e]nforcement of a presumptively valid patent
cannot be used as evidence of unfair competition absent a
showing, by clear and convincing evidence, that those
enforcement activities were objectively baseless," and in
light of the circumstances presented in this case, Rubber
Resources has not met that burden In doing so, the court
noted that the patent had survived a motion for summary
judgment of invalidity.
3 GREEN EDGE V RUBBER li/lULCH
The district court therefore precluded Rubber Re-
sources from introducing at trial any evidence relating to
Green Edge or its exclusive licensee’s patent enforcement
activities. The court, however, stated that “[n]othing in
this Order shall be deemed to preclude Rubber Resources
from introducing evidence including: (1) marketplace
statements that [IMC] and Green Edge are the sole non-
infringement source of synthetic rubber mulch; and (2)
proof that the patent is invalid, not enforceable, not
infringed, or that the amount of damages sought for
infringement are not reasonable." '
The district court certified the case for interlocutory
appeal pursuant to 28 U.S.C. § 1292(b). Rubber Re~
sources then petitioned this court for permission to __ file
the appeal. Ultimately, this court must exercise its own
discretion in deciding whether it will grant permission to
appeal interlocutory orders. See In re Corwertible R0wing
Exerciser Patent Litigation, 903 F.2d 822 (Fed.*Cir. 199O).
fn doing so, we keep in mind that "‘[i]t has . . . long been
the policy of the courts to discourage piece-meal appeals
because most often such appeals result in additional
burdens on both the court and the litigants," and thus
permissions for interlocutory appeals should be "granted
sparingly and with discrimination.”’ Union County, Iowo:
u. Piper Jaffray & Co., In,c., 525 F.3d 643, 646 (8th Cir.
2008) (citation omitted); see also Un,ited States u. Rubber
Co. v. Wright, 359 F.2d 784, 785 (9th Cir. 1955) (“The
legislative history of subsection (b) of section 1292 . . .
indicates that it was to be used only in extraordinary
cases[.]").
Section 1292(b) establishes three criteria for certifica-
tion. The district court must be of the opinion that: (1)
the order involves a controlling question of law; (2) there
is substantial ground for difference of opinion; and (3)
certification will materially advance the ultimate termi-
nation of the litigation. Because the requirements of
GREEN EDGE V RUBBER MULCH 4
§ 1292(b) are jurisdictional, see White u. Nix, 43 F.3d 374,
376 (8th Cir. 1994), a court of appeals cannot grant a
petition for permission to appeal unless it is certain these
criteria are satisfied See Piper Jaffray & Co., 525 F.3d at
646.
Thus, in Piper Jaffray & Co., the United States Court
of Appeals for the Eighth Circuit concluded that the
district court abused its discretion in certifying the inter-
locutory appeal because, inter alia, it merely quoted the
portion of the statute without providing anyAmeaningful
consideration of the statutory criterion. Id. The court in
Piper Jaffray & Co. explained that "though this criterion
may be satisfied here, the district court should make the
necessary findings to demonstrate that this statutory
criterion was satisfied." Id.Similarly here, the district court stated that-“the
issues relating to Rubber Resources’ evidence_pertaining
to the Lanham Act claim involves controlling issues of law
in this case and that there is substantial ground for
difference of opinion," and that "an interlocutory appeal
may advance the ultimate termination of this case." But,
the district court failed to provide the reasons why the
requirements had been met.
lt is also not evident which questions of law are
controlling in the view of the district court, The court’s
order refers generally to the issue of exclusion of evidence
relating to IMC and Green Edge’s patent enforcement
activities. In Isra Fruit, Ltd. v. Agrexco Agric. Exp. Co.
Ltd., 804 F.2d 24, 25 (2d Cir. 1986), the court explained
that "elaboration by the district court [as to why the
question presented by the certified order is ‘controlling’]
will normally help in understanding why the judge be-
lieves that there is a ‘substantial ground for difference of
opinion’ and that ‘immediate appeal from the order may
materially advance the ultimate termination of the litiga-
tion." Given the lack of specificity in the order, it is
5 GREEN EDGE v RUBBER MULoH
difficult for this court to conclude that the jurisdictional
criteria have been met here.
What is more, Rubber Resources has not met its bur-
den of filling in these gaps. Rubber Resources alleges in
relevant part that the certified order presents the ques-
tion of whether "[i]t is an abuse of discretion for the lower
court to grant summary judgment in response to a motion
in limine, when the matter at issue involved disputed
issues of material fact that should have been the subject
of a motion for summary judgment, subject to the relevant
burdens dictated by the Rules for summary judgment."
We, however, cannot escape the conclusion, and nei-
ther could the district court, that summary judgment was
not granted here, and Rubber Resources was allowed
under the order to pursue its counterclaim by providing
evidence of “(1) marketplace statements that [IMC] and
Green Edge are the sole non-infringement source of
synthetic rubber mulch; and (2) proof that the patent is
invalid, not enforceable, not infringed or that the amount
of damages sought for infringement are not reasonable."
Beyond that, we cannot say that an interlocutory ap-
peal in this case will materially advance the ultimate
termination of the litigation because whatever the out-
come this matter would have to go back to the district
court for trial. We therefore determine that granting the
petition in these circumstances is not warranted
Accordingly,
IT lS ORDERED THATZ
_ The petition is denied
GREEN EDGE v RUBBER MULcH 6
FoR THE CoUR'r
l 3 /s/ Jan Horbaly
Date J an Horbaly
Clerk
cc: Sara Pfrommer, Esq.
Keith A. Rabenberg, Esq.
Fl|.ED
325 us.couaroFAPPrAisron
THE FEDERAL ClRCUlT
DEC 13 2-011
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