UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
__________________________________________
)
IN RE PAPST LICENSING GMBH & CO. KG )
LITIGATION )
) Misc. Action No. 07-493 (RMC)
This document relates to )
) Multi District Litig. No. 1880
ALL CASES )
)
)
__________________________________________)
OPINION RE: FINAL JUDGMENT OF NONINFRINGEMENT IN FIRST WAVE
CASES AND RULE 54(b) CERTIFICATION
Papst Licensing GmbH & Co. KG, a German company, brought suit against
multiple manufacturers of digital cameras for alleged infringement of two patents owned by
Papst: the U.S. Patent Number 6,470,399 (399 Patent) and U.S. Patent Number 6,895,449 (449
Patent). The parties agree that the Court should enter final judgment of noninfringement in the
First Wave Cases and certify the judgment for appeal under Federal Rule of Civil Procedure
54(b) in order to permit immediate appeal of the First Wave Cases without waiting for a final
ruling with regard to the Second Wave Cases. 1
1
This Multi District Litigation currently consists of First and Second Wave Cases. The First
Wave Cases are: Fujifilm Corp. v. Papst, 07-cv-1118; Matsushita Elec. Indus. Co., Ltd. v. Papst,
07-cv-1222; Papst v. Olympus Corp., 07-cv-2086; Papst v. Samsung Techwin Co., 07-cv-2088;
Hewlett-Packard Co. v. Papst, 08-cv-865; and Papst v. Nikon Corp., 08-cv-985. The Second
Wave Cases currently are: Papst v. Canon, 08-cv-1406 and Papst v. Sanyo, 09-cv-530.
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I. FACTS
Due to the combined effect of the Court’s rulings on motions for summary
judgment filed by First Wave Camera Manufacturers, 2 all products accused of infringement have
been held not to infringe. See Papst Reply in Support of its Mot. to Withdraw [Dkt. 543] at 3;
Op. Re Samsung MSJ [Dkt. 520]; Order Re Samsung MSJ [Dkt. 521]; Op. Re CM MSJ Re
Memory Cards [Dkt. 524]; Order Re CM MSJ Re Memory Cards [Dkt. 525]; Op. Re CM MSJ
Re Data Transmit/Receive Device Claim Limitation [Dkt. 528]; Order Re CM MSJ Re Data
Transmit/Receive Device Claim Limitation [Dkt. 529]; Op. Re CM MSJ Re Input/Output Device
Customary In a Host Device [Dkt. 534]; Order Re CM MSJ Re Input/Output Device Customary
In a Host Device [Dkt. 535]; Op. Re CM MSJ Re Table 15 Devices [Dkt. 536]; Order Re CM
MSJ Re Table 15 Devices [Dkt. 537]; Op. Re CM MSJ Re Simulating a Virtual File System
[Dkt. 545]; Order Re CM MSJ Re Simulating a Virtual File System [546]; Op. Re HP MSJ [Dkt.
547]; Order Re HP MSJ [Dkt. 548]; Op. Re Second Connecting Device [Dkt. 551]; Order Re
Second Connecting Device [Dkt. 552].
Papst and the First Wave Camera Manufacturers agree that a Rule 54(b)
certification of final judgment of noninfringement should be issued in the First Wave Cases. See
Papst Position on Rule 54(b) Certification [Dkt. 555]; CMs Brief Re J. in First Wave Cases [Dkt.
556]. The Second Wave Camera Manufacturers previously stated their consent to Rule 54(b)
certification of final judgment in the First Wave Cases. See 2d Wave CMs Reply Re 6th Practice
& Pro. Order [Dkt. 378] (2d Wave Reply).
2
The First Wave Camera Manufacturers, in citations referred to as “CMs,” are: Fujifilm
Corporation; Fujifilm U.S.A., Inc.; Fujifilm Japan; Panasonic Corporation (f/k/a as Matsushita
Electric Industrial Co., Ltd.); Victor Company of Japan, Ltd.; Olympus Corporation; Olympus
Imaging America Inc.; Samsung Techwin Co., Ltd.; Samsung Opto-Electronics America, Inc.;
Panasonic Corporation of North America; JVC Company of America; Hewlett-Packard
Company; Nikon Corporation; and Nikon, Inc.
2
II. LEGAL STANDARD
A party may appeal to the Federal Circuit as of right from a final judgment in a
patent case, see Nystrom v. Trex Co. Inc., 339 F.3d 1347, 1350 (Fed. Cir. 2003), and the Federal
Circuit has jurisdiction to hear such appeals, see 28 U.S.C. § 1295(a)(1). Further, under Federal
Rule of Civil Procedure 54(b), a district court dealing with multiple claims or multiple parties
may direct the entry of final judgment as to fewer than all of the claims or parties. Fed. R. Civ.
P. 54(b). To do so, the court must make an express finding that there is no just reason for delay.
Curtiss-Wright Corp. v. General Elec. Co., 446 U.S. 1, 3 (1980). “Absent Rule 54(b)
certification, there may be no appeal of a judgment disposing of fewer than all aspects of a
consolidated case.” Spraytex, Inc. v. DJS&T, 96 F.3d 1377, 1382 (Fed. Cir. 1996).
In determining whether to grant a 54(b) motion, a court must first determine
whether the judgment to be certified for appeal was “final,” i.e. whether it was the ultimate
disposition of an individual claim. Curtiss-Wright, 446 U.S. at 7. Second, the court must
determine whether there is no just reason for delay, taking into account the federal policy against
piecemeal litigation, the need for judicial efficiency, and whether an immediate appeal would be
equitable. Id. at 8. A district court also must consider “whether the claims under review [are]
separable from the others remaining to be adjudicated and whether the nature of the claims
already determined was such that no appellate court would have to decide the same issue more
than once even if there were subsequent appeals.” Id. District courts have “substantial
discretion” in determining whether there is no just reason for delay. Intergraph Corp. v. Intel
Corp., 253 F.3d 695, 699 (Fed. Cir. 2001). “Rule 54(b) allows a district court to act as a
dispatcher and determine, in the first instance, the appropriate time when each final decision
upon one or more but less than all of the claims in a multiple claims action is ready for appeal.”
3
Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, 445 F.3d 1348, 1350-51 (Fed. Cir. 2006)
(internal quotation marks and citation omitted).
Notably, the Federal Circuit has heard appeals of Rule 54(b) certified judgments
where the judgments concerned some, but not all, of the parties in Multi District Litigation. See,
e.g., In re Gabapentin Patent Litig., 503 F.3d 1254, 1257 n.1 (Fed. Cir. 2007) (Federal Circuit
accepted appeal of summary judgment of noninfringement in favor of first wave defendants;
other groups of defendants were not part of appeal); Apotex, Inc. v. Thompson, 347 F.3d 1335,
1341 (Fed. Cir. 2003) (Federal Circuit heard appeal of Rule 54(b) certified judgment with respect
to one set of defendants in consolidated case).
III. ANALYSIS
The question of infringement of the 399 and 449 Patents has been finally
adjudicated as to the First Wave Camera Manufacturers. The many Opinions and Orders issued
on summary judgment, cited above, variously determined that all products accused of
infringement do not infringe the Patents. Further, Papst and the First Wave Camera
Manufacturers agree that a final judgment of noninfringement should be entered and the case
should be certified for immediate appeal under Rule 54(b). 3 Mindful of the policy against
piecemeal litigation as well as the need for judicial efficiency and equity, the Court finds no just
reason for delay. Further, the First Wave Cases to be appealed are separable from the Second
3
The parties disagree regarding the timing of such Rule 54(b) certification. Papst seeks
certification now, while the First Wave Camera Manufacturers want to delay certification until
after their proposed motion for attorney fees and sanctions is briefed and decided. Delay is not
required. See Fed. R. Civ. P. 58, Advisory Committee Note Re 1993 Amendment (Rule 58
permits, but does not require, the court to delay final judgment until after an attorney fee dispute
is resolved). Moreover, the delay that would be caused by such litigation is contrary to the
efficient resolution of the merits.
4
Wave Cases, and the Federal Circuit will not be required to decide the same issue more than
once even if there are subsequent appeals. See Curtiss-Wright, 446 U.S. at 8.
The remaining claims in the First Wave Cases that have not been adjudicated are
invalidity and enforceability claims and counterclaims against Papst. The Court has found
noninfringement and, consequently, it will dismiss as moot all other claims and counterclaims in
the First Wave Cases. See Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1371
(Fed. Cir. 2004) (district court has discretion to dismiss invalidity claims and counterclaims as
moot when it has found noninfringement).
That the Second Wave Cases have not been adjudicated yet should not bar entry
of final judgment in the First Wave Cases. The Second Wave Cases were added to this Multi
District Litigation on the eve of claims construction in the First Wave Cases, and the Court
stayed the Second Wave Cases to allow claims construction to move forward in the First Wave
Cases. See 4th Practice & Pro. [Dkt. 218]. The stay was continued to enable the First Wave
Cases to be adjudicated through summary judgment. See 7th Practice & Pro. Order [Dkt. 391] at
6 (“The resolution of the First Wave Cases may well serve to resolve the Second Wave Cases, as
the majority of the issues are likely to be the same.”). Thus, the Second Wave Cases have not
progressed past the pleading stage. The Second Wave Camera Manufacturers agree that Rule
54(b) certification is appropriate upon entry of final judgment of noninfringement in the First
Wave Cases:
[T]his Court should allow the first wave Camera Manufacturers to
pursue summary judgment of non-infringement without lifting the
stay in the Second Wave Cases. Upon the conclusion of those
proceedings, the Court should properly certify the judgment as
final pursuant to Rule 54(b). There will be no just reason for delay
because the Second Wave defendants have not participated
substantively in the litigation, Federal Circuit review is likely to
narrow the issues as to both the First Wave and Second Wave
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defendants, and the resolution of Papst’s infringement claims as to
the First Wave [Camera Manufacturers] may facilitate settlement
between both the First Wave and Second Wave [Camera
Manufacturers] and Papst.
2d Wave Reply at 4.
IV. CONCLUSION
Accordingly, final judgment of noninfringement of the 399 and 449 Patents will
be entered in the First Wave Cases in favor of the First Wave Camera Manufacturers, and all
other claims or counterclaims in those cases will be dismissed as moot. This final judgment of
noninfringement will be certified for immediate appeal to the U.S. Court of Appeals for the
Federal Circuit under Rule 54(b), as there is no just reason for delay. A memorializing Order
accompanies this Memorandum Opinion.
Date: November 14, 2013 /s/
ROSEMARY M. COLLYER
United States District Judge
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