Lotus Development v. Borland

USCA1 Opinion









December 28, 1995 [NOT FOR PUBLICATION]
United States Court of Appeals United States Court of Appeals
For the First Circuit For the First Circuit
____________________
No. 95-1793

IN RE: BORLAND INTERNATIONAL, INC.,

Petitioner,

_____________________
No. 95-1885

LOTUS DEVELOPMENT,

Plaintiff, Appellee,,

v.

BORLAND INTERNATIONAL, INC.,

Defendant, Appellant.

____________________

APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS CONSOLIDATED WITH
PETITION FOR WRIT OF MANDAMUS

[Hon. Douglas P. Woodlock, U.S. District Judge] ___________________
____________________

Before
Torruella, Chief Judge, ___________
Boudin and Stahl, Circuit Judges. ______________
____________________

Steven Brower with whom Joel D. Covelman, Ginsburg, Stephan, ______________ _________________ ___________________
Oringher & Richman, Peter E. Gelhaar, Katherine L. Parks, and ____________________ __________________ ____________________
Donnelly, Conroy & Gelhaar were on brief for appellant/petitioner. __________________________
Henry B. Gutman with whom Kerry L. Konrad, Jeffrey E. Ostrow, ________________ ________________ __________________
Lori E. Lesser, Baker & Botts, L.L.P., Thomas M. Lemberg and Hale and _______________ _____________________ _________________ ________
Dorr were on brief for appellee/respondent. ____
_____________________

_____________________





















STAHL, Circuit Judge. Although the pitched STAHL, Circuit Judge. ______________

software copyright battle between Lotus Development Corp.

("Lotus") and Borland International, Inc. ("Borland") is now

before the Supreme Court, Borland seeks to reverse two

district court orders, either by appeal or by mandamus. We

defer our decision on the appeal for prudential reasons, and

deny the petition for a writ of mandamus.

I. I. __

BACKGROUND BACKGROUND __________

Lotus has waged a protracted litigation against

Borland, alleging that Borland infringed Lotus's copyright in

"Lotus 1-2-3", a popular and extremely successful computer

spreadsheet program. See Lotus Dev. Corp. v. Borland Int'l, ___ ________________ _______________

Inc., 49 F.3d 807, 809 (1st Cir. 1995) (citing four district ____

court decisions in this case). In 1993, the United States

District Court for the District of Massachusetts ruled that

Borland had copied Lotus 1-2-3's menu command hierarchy;1

accordingly, the court entered a permanent injunction against

Borland. Lotus Dev. Corp. v. Borland Int'l, Inc., 831 F. _________________ ____________________

Supp. 223, 245 (D. Mass. 1993).




____________________

1. The menu command hierarchy is the 1-2-3 program's system
of operating commands (e.g., "Open"; "Save"; "Delete") that
are arranged in a linked hierarchy of command menus and
submenus. Each menu is a list of commands displayed on-
screen. The user selects a command by highlighting it on the
menu or typing its first letter.

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Borland appealed the infringement ruling and the

injunction. By the time of that appeal, the district court

proceedings had narrowed the copyright claim to Borland's

alleged infringement of the menu command hierarchy. Lotus

did not contend on appeal that the district court erred in

finding that Borland had not copied any other elements of

Lotus 1-2-3. In March 1995, this court ruled that the menu

command hierarchy of Lotus 1-2-3 was a "method of operation"

not protectible by copyright, as provided in 17 U.S.C.

102(b), reversing the judgment of the district court. Lotus _____

Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807 (1st Cir. ___________ ____________________

1995).

Lotus filed a petition for certiorari with the

United States Supreme Court. While the certiorari petition

was pending, Borland filed a motion in the district court

seeking the entry of final judgment in its favor, arguing

that our opinion had rejected the only remaining basis for

Lotus's case. Lotus countered with a motion to stay all

further proceedings until the Supreme Court either denied

certiorari or ruled on the merits of the appeal. The

district court denied Borland's motion to enter judgment and

granted the stay that Lotus requested, noting in the margin

that "the pendency of the petition for writ of certiorari,

which raises issues sufficiently meritorious to permit

further judicial review[,] coupled with the absence of any



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cognizable harm to the defendant during the pendency of

certiorari proceedings[,] counsels against further --

potentially unnecessary -- proceedings in this court until

the petition is resolved."

Borland now appeals the district court's refusal to

enter final judgment and its grant of a stay until the

Supreme Court decided Lotus's appeal. Apparently recognizing

that this court might find these to be non-appealable

interlocutory orders, Borland seeks in the alternative a writ

of mandamus directing the district court to enter judgment

and to dissolve its stay order. While this appeal and

petition were pending, the Supreme Court granted certiorari,

Lotus Dev. Corp. v. Borland Int'l, Inc., 116 S. Ct. 39 (Sept. ________________ ___________________

27, 1995), and scheduled arguments for January 1996.

II. II. ___

BORLAND'S APPEAL BORLAND'S APPEAL ________________

Borland appeals the district court's orders denying

Borland's motion to enter judgment and granting Lotus's

motion for a stay of proceedings. We have significant doubts

as to our jurisdiction because the orders appealed from

appear to be neither "final decisions" reviewable under 28

U.S.C. 1291 nor appealable interlocutory orders under the

"collateral order" doctrine of Cohen v. Beneficial Indus. _____ __________________

Loan Corp, 337 U.S. 541 (1949). Our jurisdictional doubts _________

notwithstanding, we believe the wisest course at this



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juncture is to defer our decision on the jurisdictional

questions and the merits until the Supreme Court announces

its decision in this case. See, e.g., Glater v. Eli Lilly & ___ ____ ______ ___________

Co., 744 F.2d 213, 214 (1st Cir. 1984) (decision deferred ___

until Supreme Court decides key issue in another case). We

recognize that this appeal will almost certainly become moot

when the Supreme Court rules, but that fact counsels against,

not for, our deciding the appeal now. Thus, we defer

decision on this appeal until the Supreme Court announces its

decision in this case.

III. III. ____

BORLAND'S PETITION FOR WRIT OF MANDAMUS BORLAND'S PETITION FOR WRIT OF MANDAMUS _______________________________________

Federal appellate courts are empowered to issue

prerogative writs that are "necessary or appropriate in aid

of their respective jurisdictions," 28 U.S.C. 1651(a), but

that power must be used stintingly and brought to bear only

in extraordinary situations. Doughty v. Underwriters at _______ ________________

Lloyd's, London, 6 F.3d 856, 865 (1st Cir. 1993). The ________________

standards for issuance of the writ of mandamus are high: a

petitioner must show both that the challenged order is

palpably erroneous and that he faces some special risk of

irreparable harm. In re Cargill, Inc., 66 F.3d 1256, 1260 ____________________

(1st Cir. 1995); United States v. Horn, 29 F.3d 754, 769 (1st _____________ ____

Cir. 1993); Doughty, 6 F.3d at 865. And, even these showings _______

do not necessarily require a court's use of the writ of



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mandamus, which, as an exceptional remedy, is to be granted

only in the exercise of sound discretion. Cargill, 66 F.3d _______

at 1260.

This petition does not present the combination of

palpable error and irreparable harm necessary to justify

mandamus. As to the district court's refusal to enter

judgment for Borland, we note that our mandate directed only

that the judgment for Lotus be reversed. The district court

complied by vacating the injunction. We did not direct the

entry of judgment for Borland; although that result might be

expected to follow in due course, this is not a situation

where the court below has ignored our clear mandate.

As to the stay, it would be a poor use of judicial

resources to conduct further proceedings in the district

court at this time, given that the Supreme Court is about to

hear Lotus's appeal. Whatever Borland's concern about

interest on an attorney fee award, the decision when to enter

judgment in a case where the Supreme Court has agreed to

review the appeals court's own decision is obviously not a

candidate for mandamus.

IV. IV. ___

CONCLUSION CONCLUSION __________

For the foregoing reasons, we defer our decision in

Borland's appeal, No. 95-1885, and we deny Borland's petition

for a writ of mandamus, No. 95-1793.



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Petition for writ of mandamus denied. No costs to Petition for writ of mandamus denied. No costs to _____________________________________ ___________

either party. either party. _____________

















































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