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After a Jury Trial Determining that the Defendant Infringed Several Valid Patents, the District Court Certified the Partial Judgment for Appeal Prior to a Trial on Damages Because the PTAB Had Found One of the Patents Invalid

Plaintiffs asserted that defendants infringed several patents. The district court bifurcated liability and damages for all four patent infringement claims. After a jury trial, the jury concluded that the patents were valid and infringed. Subsequently, after an inter partes review proceeding, the Patent Trial and Appeal Board (“PTAB”) issued a Final Written Decision that found all asserted claims of one of the patents-in-suit unpatentable.

The district court denied the defendants’ post-trial motions with respect to most of the patents, but withheld any decision on any issues pertaining to the ‘244 patent, which was the subject of the PTAB proceeding and a pending appeal from the PTAB decision. The defendants then filed a motion for certification of partial final judgment on the patent infringement claims pursuant to Fed. R. Civ. P. 54(b).

The district court first had to determine whether “a judgment [is] appealable as a final decision.” W.L. Gore, 975 F.2d at 862. The district court explained that “[t]he Federal Circuit has held that a patent infringement liability judgment may be appealed when all that remains is a damages trial. Robert Bosch, 719 F.3d at 1317. Since ยง 1292(c)(2) constitutes an exception to the final judgment rule, an order which finally adjudicates patent infringement liability is “a decree [or] . . . order from which an appeal lies,” Fed. R. Civ. P. 54(a), which satisfies the “final judgment” requirement of Rule 54(b). See Sanofi-Aventis Deutschland GmbH v. Glenmark Pharm. Inc., USA, 748 F.3d 1354, 1357-58 (Fed. Cir. 2014).” The district court therefore concluded that an entry of judgment as to patent infringement liability when only a damages trial remains, is a final judgment for purposes of Rule 54(b).

Second, the district court had to determine “whether there is any just reason for delay.” Here, the district court considered that the power-ramp up patent infringement claims had been adjudicated for purposes of Rule 54(b). Accordingly, because there was no overlap between the adjudicated power ramp-up patent infringement claims and the unadjudicated ‘244 patent infringement claims, the district court concluded that “this factor favors a certification of partial final judgment.”

The district court also considered that the defendants will eventually appeal the liability judgment with respect to the power ramp-up patents and that “the only question is when that will occur. The need for appellate review will not be mooted by any future developments in the district court. This factor favors a certification of partial final judgment.”

The district court also determined that because patent infringement liability as to the power ramp-up patents has been conclusively determined there was no “possibility that the reviewing court might be obliged to consider the same issue a second time.” Berckeley, 455 F.3d at 203. “While there could be a future appeal with respect to the ‘244 patent–should the Federal Circuit reverse the PTAB–there do not appear to be any overlapping issues between the ‘244 patent infringement case and the power ramp-up patent infringement case. Therefore, this factor favors a certification of partial final judgment.”

The parties also disputed whether a certification of partial final judgment would promote judicial efficiency. The district court found that this factor also weighed in favor of certification. “As I see it, Defendants intend to appeal liability as to the power ramp-up patents at their earliest opportunity. A trial on damages is currently anticipated in February 2018. In all likelihood, the Federal Circuit will decide the ‘244 PTAB appeal no later than early 2017, and I will then decide the stayed post-trial motions in 2017, meaning that Defendants will be able to appeal as of right before we would have the damages trial in this case. Thus, this case will likely be appealed before any damages trial. Defendants, if their appeal has merit, will be able to avoid a damages trial regardless of when an appeal is taken. If the appeal is taken now, damages discovery might be avoided entirely.”

Accordingly, the district court certified the partial final judgment for appeal.

Interdigital Communications, Inc. v. ZTE Corp., Case No. 13-009-RGA (D. Del. June 2016)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or

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