NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
MISCELLANEOUS DOCKET NO. 892
IN RE ENZO BIOCHEM, INC., ENZO LIFE SCIENCES, INC.,
and YALE UNIVERSITY,
Petitioners.
On Writ of Mandamus from the United States District Court for the District of
Connecticut in case no. 3:04-CV-929, Judge Janet Bond Arterton.
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2008-1058
ENZO BIOCHEM, INC., ENZO LIFE SCIENCES, INC.,
and YALE UNIVERSITY,
Plaintiffs-Appellants,
v.
APPLERA CORP. and TROPIX, INC.,
Defendants-Appellees.
Appeal from the United States District Court for the District of Connecticut in
case no. 3:04-CV-929, Judge Janet Bond Arterton.
ON PETITION FOR WRIT OF MANDAMUS
Before GAJARSA, LINN, and PROST, Circuit Judges.
PROST, Circuit Judge.
ORDER
Enzo Biochem, Inc. et al. (Enzo) petition for a writ of mandamus to direct the
United States District Court for the District of Connecticut to enter final judgment.
Alternatively, Enzo requests that the court recall the mandate in Enzo Biochem, Inc. v.
Applera Corp., no. 2008-1058, reinstate that appeal, and set a briefing schedule.
Applera Corp. et al. (Applera) oppose.
Enzo sued Applera for infringement of six patents. Applera counterclaimed for
noninfringement and invalidity of all six patents. On the parties’ stipulation, the district
court dismissed all claims and counterclaims with respect to two of the patents. The
district court later entered summary judgment of invalidity with respect to three of the
patents. In its ruling, the district court stated, “Plaintiffs [Enzo et al.] no longer press
their claims related to Patent No. 4,711,955 (“ ‘955 Patent”) [the final patent in suit].”
The district court did not rule on Applera’s counterclaims directed to the ‘955 patent and
directed the clerk to close the case. The clerk closed the case and issued a document
entitled “JUDGMENT” on September 10, 2007. Enzo filed a notice of appeal. However,
Enzo subsequently filed a motion to voluntarily dismiss the appeal. The motion was
granted by the clerk of this court and the appeal, no. 2008-1058, was dismissed on
January 30, 2008.
Enzo then filed a motion for entry of final judgment in the district court. On
November 24, 2008 the district court denied the motion. The district court reasoned that
its September 10, 2007 decision was a final judgment. The district court stated that
because it found invalid all of the patent claims on which Enzo continued to press its
infringement allegations, it was not necessary to rule on Applera’s noninfringement
counterclaims. With respect to the ‘955 patent, the district court stated that Enzo had
effectively withdrawn its infringement claims and this “obviate[ed] the need for any
judicial determination.”
Misc. 892, 2008-1058 2
Enzo states that it voluntarily dismissed appeal no. 2008-1058 because it
believed that the district court’s September 10, 2007 decision was not a final judgment.
Enzo states that it has now stipulated that it will not sue Applera for infringement arising
from activities or products with respect to the ‘955 patent occurring on or before May 4,
2008 and argues that this “thereby moot[s] the counterclaims directed to this patent.”
Applera argues that the district court’s September 10, 2007 decision reflected the
district court’s clear intention to end the case and, pursuant to this court’s decision in
Pandrol USA, LP v. Airboss Railway Prods., Inc., 320 F.3d 1354, 1362-63 (Fed. Cir.
2003), that is sufficient to render that decision a final judgment. With respect to the ‘955
patent, Applera argues that the district court “clearly declared that the ‘955 patent was
no longer at issue before entering judgment.”
The remedy of mandamus is available only in extraordinary situations to correct a
clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461,
464 (Fed. Cir. 1988). A party seeking a writ bears the burden of proving that it has no
other means of attaining the relief desired, Mallard v. U.S. Dist. Court for the Southern
Dist. of Iowa, 490 U.S. 296, 309 (1989), and that the right to issuance of the writ is "clear
and indisputable," Allied Chemical Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980).
“A ‘final decision’ generally is one which ends the litigation on the merits and
leaves nothing for the court to do but execute the judgment.” Catlin v. United States,
324 U.S. 229, 233 (1945). “A pending counterclaim precludes jurisdiction absent
certification under Rule 54(b)”. See Pause Technology, LLC v. Tivo Inc., 401 F.3d
1290, 1294 (Fed. Cir. 2005); see also 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 parties and there is no
Misc. 892, 2008-1058 3
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”).
In this case, the district court’s September 10, 2007 order did not dispose of
Applera’s invalidity counterclaim concerning the ‘955 patent. Although the district court
noted that Enzo was no longer pressing its infringement claim concerning that patent, the
district court made no ruling concerning invalidity of the ‘955 patent claims. Thus, this
case is unlike Pandrol. In Pandrol, the district court ruled that the defendants had waived
their counterclaims. See Pandrol, 320 F.3d at 1357 (“[t]he district court . . . found that the
defendants had waived their affirmative defenses and counterclaims by not raising them
during briefing or cross-motions for summary judgment”). In contrast, in this case the
district court did not enter any ruling concerning the counterclaim of invalidity of the ‘955
patent. As there has been no express ruling concerning that counterclaim, it remains
pending. Because that counterclaim remains pending, the court determines that Enzo has
met its burden of showing a clear and indisputable right to issuance of a writ. The court
does not decide whether Enzo is correct that its stipulation not to sue Applera concerning
the ‘955 patent moots Applera’s counterclaims directed to that patent. The district court
should resolve that issue in the first instance.
Accordingly,
IT IS ORDERED THAT:
(1) The petition for a writ of mandamus is granted to the extent that the district
court is directed to reopen the case, enter a ruling on Applera’s counterclaim for
invalidity of the ‘955 patent, and, after ruling on that counterclaim, enter final judgment.
Misc. 892, 2008-1058 4
(2) Enzo’s alternative request that the court recall the mandate in Enzo
Biochem, Inc. v. Applera Corp., no. 2008-1058, reinstate that appeal, and set a briefing
schedule is denied.
FOR THE COURT
Feb. 6, 2009 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
cc: L. Gene Spears, Esq.
Nicholas Groombridge, Esq.
Judge, USDC, D. Conn.
Clerk, USDC, D. Conn.
s17
Misc. 892, 2008-1058 5