Black & Decker v. Robert Bosch Tool Corporation , 230 F. App'x 968 ( 2007 )

NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1077
BLACK & DECKER, INC.
and BLACK & DECKER (U.S.), INC.,
Plaintiffs-Appellees,
v.
ROBERT BOSCH TOOL CORPORATION,
Defendant-Appellant.
Before BRYSON, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and PROST, Circuit
Judge.
PROST, Circuit Judge.
ORDER
Robert Bosch Tool Corporation (Bosch) responds to the court’s January 26, 2007
order directing it to respond concerning whether its appeal of the October 24, 2006
order of the United States District Court for the Northern District of Illinois in Black &
Decker, Inc. v. Robert Bosch Tool Corp., No. 04-CV-7955, should be dismissed as
premature. Black & Decker, Inc. et al. (Black & Decker) respond.
Black & Decker filed a patent infringement complaint against Bosch. The district
court bifurcated Bosch’s unenforceability counterclaims from the trial on infringement
and invalidity. The district court entered “judgment” on a jury verdict with respect to
infringement and invalidity on September 26, 2006. The district court then held a bench
trial on unenforceability, and on October 24, 2006 entered an order denying the
unenforceability counterclaim. On November 21, 2006, Bosch filed a notice of appeal
seeking review of the October 24 order. On November 29, 2006, the district court
entered a permanent injunction. To date, the district court has not entered final
judgment with respect to all claims for relief on a separate document pursuant to Fed.
R. Civ. P. 58. *
Black & Decker argues that Bosch’s appeal is premature because the district
court had not concluded its proceedings at the time the appeal was filed. Bosch argues
that even if its appeal is premature, it ripened as of the entry of the permanent injunction
pursuant to E-Pass Techs., Inc. v. 3COM Corp., 343 F.3d 1364, 1367 (Fed. Cir. 2003).
In E-Pass, at the time the notice of appeal was filed there were invalidity
counterclaims pending in the district court. After the appeal was filed, the district court
dismissed the invalidity counterclaims without prejudice. We determined that the
premature appeal ripened upon the district court’s dismissal of the pending
counterclaims. However, the rationale of E-Pass is not applicable to this case. Unlike
in E-Pass, in this case the district court adjudicated on the merits the remaining claim
for relief, i.e., Black & Decker’s motion for a permanent injunction. Thus, in this case,
the district court’s post-appeal action altered the issues that could be presented on
appeal. In contrast, in E-Pass, the district court’s dismissal without prejudice was not an
adjudication on the merits and thus did not alter the issues presented on appeal.
Because the district court has not yet entered final judgment, the appeal is
dismissed as premature. See 28 U.S.C. § 1295 (a)(1); Nystrom v. Trex Co., 339 F.3d
1347, 1350 (Fed. Cir. 2003) (“If a case is not fully adjudicated as to all claims for all
*
The district court entered a document entitled “Judgment in a Civil Case”
on September 26, 2006. However, that judgment related only to infringement and
invalidity, and at the time it was entered Bosch’s unenforceability counterclaim remained
pending. Thus, it was not a final judgment.
2007-1077 2
parties and there is no express determination that there is no just reason for delay or
express direction for entry of judgment as to fewer than all of the parties or claims, there
is no final decision under 28 U.S.C. § 1295 (a)(1) and therefore no jurisdiction”).
Accordingly,
IT IS ORDERED THAT:
(1) The appeal is dismissed.
(2) Each side shall bear its own costs.
FOR THE COURT
March 27, 2007 /s/ Sharon Prost
Date Sharon Prost
Circuit Judge
cc: Dean D. Niro, Esq.
Jon R. Trembath, Esq.
s17
2007-1077 3