United States Court of Appeals for the Federal Circuit
03-1380
COMPETITIVE TECHNOLOGIES, INC.,
Plaintiff,
and
BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS,
Plaintiff-Appellant,
v.
FUJITSU LIMITED and FUJITSU HITACHI PLASMA DISPLAY LIMITED,
Defendants-Appellees,
and
FUJITSU AMERICA, INC., FUJITSU GENERAL AMERICA CORP.,
FUJITSU GENERAL LIMITED, and FUJITSU MICROELECTRONICS, INC.,
Defendants.
Morgan Chu, Irell & Manella LLP, of Los Angeles, California, filed a combined
petition for rehearing and rehearing en banc for plaintiff-appellant. With him on the
petition were Joseph M. Lipner and Perry Goldberg.
Karen L. Hagberg, Morrison & Foerster LLP, of New York, New York, filed a
response to the petition for defendants-appellees. With her on the response were
Preston Moore and Jun Tsutsumi.
Appealed from: United States District Court for the Northern District of California
Magistrate Judge Joseph C. Spero
United States Court of Appeals for the Federal Circuit]
03-1380
COMPETITIVE TECHNOLOGIES, INC.,
Plaintiff,
and
BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS,
Plaintiff-Appellant,
v.
FUJITSU LIMITED and FUJITSU HITACHI PLASMA DISPLAY LIMITED,
Defendants-Appellees,
and
FUJITSU AMERICA, INC., FUJITSU GENERAL AMERICA CORP.,
FUJITSU GENERAL LIMITED, and FUJITSU MICROELECTRONICS, INC.,
Defendants.
ON PETITION FOR REHEARING
Before MAYER,* GAJARSA, and DYK, Circuit Judges.
DYK, Circuit Judge.
*
Judge Haldane Robert Mayer vacated the position of Chief Judge on
December 24, 2004.
ORDER
The Board of Trustees of the University of Illinois (the “University”) petitions for
rehearing of our earlier decision dismissing the University’s appeal for lack of
jurisdiction. We deny the petition.1
The University urges that our decision is contrary to the Fifth Circuit decision in
Sherwinski v. Peterson, 98 F.3d 849 (5th Cir. 1996). We disagree. In Sherwinski, the
district court denied the motion to dismiss by the Texas Department of Criminal Justice
(the “Department”), stating that “‘[u]ntil the factual and legal basis of the case has been
further developed, no defendants will be dismissed.’” Id. at 851 (alteration in original).
The Fifth Circuit noted that, although the district court’s order did not expressly find that
the Department was not immune from suit, “the end result is the same” because the
Department did not receive the dismissal to which it was entitled. Id. Thus, Sherwinski
is not a case in which the Eleventh Amendment immunity issue itself was expressly left
open to reconsideration by the district court, as in this case; rather, the district court in
Sherwinski declined to recognize the Department’s immunity defense and refused to
dismiss.
Second, the University urges that the Second Circuit decision in In re “Agent
Orange” Product Liability Litigation, 745 F.2d 161 (2d Cir. 1984), on which we relied,
see Competitive Techs., Inc. v. Fujitsu Ltd., 374 F.3d 1098, 1104 (Fed. Cir. 2004), is no
longer good law. While aspects of Agent Orange have been called into question by
1
Contrary to the response by Fujitsu Limited and Fujitsu Hitachi Plasma
Display Limited (collectively, “Fujitsu”) to the University’s petition for rehearing (see
Response of Defendants-Appellees at 4-5), we have not decided any aspect of the
sovereign immunity dispute.
03-1380 2
later decisions of the Second and Ninth Circuits, see Dibble v. Fenimore, 339 F.3d 120,
124 (2d Cir. 2003); Lutz v. Sec’y of the Air Force, 944 F.2d 1477, 1481-82 (9th Cir.
1991), those later decisions did not call into question those portions of Agent Orange on
which we relied, see Competitive Techs., 374 F.3d at 1104. Neither of the later
decisions held or suggested that a tentative decision of the district court on immunity
grounds, expressly subject to further consideration because of unresolved issues in the
case, meets the first prong of the Cohen test. See Cohen v. Beneficial Indus. Loan
Corp., 337 U.S. 541, 546-47 (1949). Indeed, both Dibble and Lutz expressly
distinguished Agent Orange under the first prong of Cohen. In Lutz, the court stated:
In Agent Orange the district court had expressly stated that its order was
“tentative” and that the government could “renew its motion to dismiss at
any time before or during trial as further evidence and legal developments
suggest.” 745 F.2d at 164. Here, by contrast, the district court appears to
have determined conclusively the question of whether the defendants’
actions were “incident to military service,” thus meeting the first prong.
944 F.2d at 1481. Similarly, the court in Dibble noted that “the order appealed from in
Agent Orange was ‘tentative’ in its wording, thus raising doubt whether it ‘conclusively
determined’ the question of immunity.” 339 F.3d at 124. As we have held, the
decisions of the Supreme Court in Coopers & Lybrand v. Livesay, 437 U.S. 463 (1978),
and Swint v. Chambers County Commission, 514 U.S. 35 (1995), which was decided
after Puerto Rico Aqueduct & Sewer Authority v. Metcalf & Eddy, Inc., 506 U.S. 139
(1993), make clear that a non-final resolution does not satisfy the Cohen test. Thus, the
application of the first prong of Cohen in Agent Orange has not been undermined by
subsequent decisions of the Supreme Court or other courts of appeals.
03-1380 3
Accordingly,
IT IS ORDERED THAT:
The Petition for Rehearing is denied.
FOR THE COURT
__January 03,2005__ Timothy B. Dyk_______
Date Timothy B. Dyk
Circuit Judge
03-1380 4