NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
05-1510
REVOLUTION EYEWEAR, INC.,
Plaintiff/Counterclaim Defendant-
Appellant,
and
GARY MARTIN ZELMAN,
Counterclaim Defendant,
v.
ASPEX EYEWEAR, INC. and NONU IFERGAN,
Defendants/Counterclaimants-
Appellees.
__________________________
DECIDED: May 12, 2006
__________________________
Before SCHALL, Circuit Judge, CLEVENGER, Senior Circuit Judge, and PROST,
Circuit Judge.
SCHALL, Circuit Judge.
DECISION
Revolution Eyewear, Inc. (“Revolution”) appeals the decision of the United States
District Court for the Central District of California awarding Aspex Eyewear, Inc.
(“Aspex”) attorney’s fees in the amount of $256,108.14 pursuant to 35 U.S.C. § 285.
Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No. 03-5965 (C.D. Cal. May 2, 2005)
(“Attorney’s Fees Decision”). We dismiss for lack of jurisdiction.
DISCUSSION
I.
On August 21, 2003, Revolution sued Aspex in the Central District of California
for infringement of U.S. Patent No. 6,550,913 B2 (“the ’913 patent”), which relates to
auxiliary eyeglasses. In response, Aspex filed counterclaims of declaratory judgment
that it does not infringe the ‘913 patent, that the ‘913 patent is invalid, and that the ‘913
patent is unenforceable due to inequitable conduct during prosecution of the patent.
In due course, Aspex moved for partial summary judgment that all six claims of
the ‘913 patent were invalid as anticipated and unenforceable due to inequitable
conduct. On March 7, 2005, the district court granted summary judgment in favor of
Aspex that claims 1-6 of the ’913 patent were invalid as anticipated. Revolution
Eyewear, Inc. v. Aspex Eyewear, Inc., No. 03-5965 (C.D. Cal. Mar. 7, 2005). The court
then explained that Aspex’s counterclaim for unenforceability due to inequitable conduct
was moot. Id., slip. op. at 20. On March 18, 2005, the district court issued its judgment
invalidating the ‘913 patent and dismissing Aspex’s counterclaims of infringement and
unenforceability without prejudice as moot. Revolution Eyewear, Inc. v. Aspex
05-1510 2
Eyewear, Inc., No. 03-5965 (C.D. Cal. Mar. 18, 2005). On March 23, 2005, Revolution
filed its notice of appeal of the summary judgment decision.
On April 5, 2005, Aspex moved for attorney’s fees. On May 2, 2005, the district
court found inequitable conduct in the prosecution of the ‘913 patent and granted
Aspex’s motion for attorney’s fees. Attorney’s Fees Decision. On July 1, 2005, the
district court awarded Aspex attorney’s fees of $256,108.14 with interest. Revolution
Eyewear, Inc. v. Aspex Eyewear, Inc., No. 03-5965 (C.D. Cal. July 1, 2005). The court
declared that “[t]he judgment entered on March 18, 2005 is amended nunc pro tunc to
reflect the Court’s award.” Id., slip op. at 15. Revolution then filed its notice of appeal of
the attorney’s fees decision.
On March 30, 2006, this court vacated the decision of the district court holding
the claims of the ‘913 patent invalid and remanded the case to the district court for
further proceedings. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No. 05-1329,
2006 U.S. App. LEXIS 7935 (Fed. Cir. Mar. 30, 2006) (“Revolution I”). The mandate
issued to the district court on April 20, 2006.
II.
For the following reasons, we dismiss Revolution’s appeal for lack of jurisdiction.
We review as a matter of law the issue of our jurisdiction, even if it is not raised
by the parties. See Bender v. Williamsport Area Sch. Dist., 475 U.S. 534, 541 (1986);
Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1362 (Fed. Cir. 2003).
This court has jurisdiction over a final decision of a district court pursuant to 28 U.S.C.
§ 1295(a)(1) (“The United States Court of Appeals for the Federal Circuit shall have
exclusive jurisdiction. . . of an appeal from a final decision of a district court . . . .”
05-1510 3
(emphasis added)). A “final judgment” is one that “‘ends the litigation on the merits and
leaves nothing for the court to do but execute the judgment.’” Nystrom v. Trex Co., 339
F.3d 1347, 1350 (Fed. Cir. 2003) (quoting Catlin v. United States, 324 U.S. 229, 233
(1945)); see also Pause Tech. LLC v. TiVo Inc., 401 F.3d 1290, 1292-94 (Fed. Cir.
2005) (recognizing that this court did not have jurisdiction over an appeal because an
invalidity counterclaim remained pending before the district court and there had not
been a certification under Federal Rule of Civil Procedure 54(b)). “If a case is not fully
adjudicated as to all claims for all 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.” Nystrom, 339 F.3d at 1350.
There is no final judgment in this case. In view of this court’s March 30, 2006
decision in Revolution I, and in view of the issuance of the mandate on April 20, 2006,
there is no longer a final judgment in the district court because validity and infringement
are still pending there. Both Revolution and Aspex argue that the court has jurisdiction
over this appeal because there is a final judgment by reason of the district court’s
finding of inequitable conduct. Contrary to the parties’ arguments, however, there is no
final judgment. That is because a finding of inequitable conduct is not a judgment of
unenforceability, and no judgment of unenforceability has been entered in this case.
The district court’s July 1, 2005 decision amending its March 18, 2005 decision
nunc pro tunc to reflect its award of attorney’s fees does not alter this result. Nunc pro
tunc applies to an earlier decision when the court intended then to do what it did later.
See United States v. Sumner, 226 F.3d 1005, 1009-10 (9th Cir. 2000). That is not what
05-1510 4
happened here. On March 18, 2005, it was the intent of the district court to dismiss the
counterclaim of unenforceability. The district court’s statement of nunc pro tunc on July
1, 2005, only amended the March 18, 2005 decision to add an award of attorney’s fees.
Further, even if there had been a judgment of inequitable conduct, as opposed to
a finding, there would still not be a final judgment in this case because, in view of this
court’s March 30, 2006 decision vacating the judgment of invalidity and remanding the
invalidity and infringement issues, see Revolution I, non-adjudicated claims remain
before the district court. There is no final judgment in this case because those claims
are pending before the district court.
III.
For the foregoing reasons, we dismiss this case for lack of jurisdiction because
there is no final judgment. The district court currently has before it Revolution’s claim of
infringement, Aspex’s counterclaim of invalidity, and Aspex’s affirmative defenses. If,
on remand, Aspex chooses to pursue its counterclaims of noninfringement and
unenforceability, the district court should reinstate those counterclaims. After hearing
from the parties, the court may proceed, as appropriate, to adjudicate one or more of
the several matters before it. The parties should bear in mind that this court will only
have jurisdiction over any future appeal if there has been a final judgment on all claims
or if there has been an entry of judgment on less than all of the claims pursuant to
Federal Rule of Civil Procedure 54(b).1
Each party shall bear its own costs.
1
Alternatively, non-adjudicated claims may be dismissed without prejudice.
See Nystrom, 339 F.3d at 1351 n.*.
05-1510 5
Revolution Eyewear, Inc. v. Aspex Eyewear
Combined Opinion