Warsaw Orthopedic, Inc. v. Nuvastve, Inc.

NOTE: This order is nonprecedential.

ijliniteb ~tatei) (!Court of §ppeali)
for tbe jfeberaI (!Circuit

WARSAW ORTHOPEDIC, INC.,
Plaintiff/Counterclaim Defendant-Appellant,
AND

MEDTRONIC SOFAMOR DANEK USA, INC.,
Counterclaim Defendant-Appellant,
AND

MEDTRONIC PUERTO RICO OPERATIONS CO.
AND MEDTRONIC SOFAMOR DANEK
DEGGENDORF, GMBH,
Counterclaim Defendants,
v.
NUVASIVE, INC.,
Defendant / Counterclaimant-Cross Appellant.

2012-1263, -1266

Appeals from the United States District Court for the
Southern District of California in Case No. 08-CV-1512,
Judge Cathy Ann Bencivengo and Judge Michael M.
Anello.

ON MOTION
WARSAW ORTHOPEDIC v. NUVASIVE 2

Before LOURIE, SCHALL, and DYK, Circuit Judges.
LOURIE, Circuit Judge.
ORDER
Warsaw Orthopedic, Inc. and Medtronic Sofamor
Danek USA, Inc. (collectively Warsaw) move to dismiss
the appeals for lack of appellate jurisdiction. NuVasive
opposes. Warsaw replies.
Warsaw brought this suit against NuVasive for patent
infringement of nine patents. NuVasive counterclaimed
for infringement of three of its own patents. The district
court directed the parties to select three patents each for
the first phase of litigation (Phase I). A jury decided the
issues of infringement, validity, and damages for the
patents involved in Phase I, and the judge subsequently
decided the inequitable conduct allegations a~ainst War-
saw. The district court entered a final judgment for
Phase I pursuant to Fed. R. Civ. P. 54(b) despite the fact
that pre-judgment interest and the amount of ongoing
royalties have not yet been decided by the court.
"A judgment is not final for Rule 54 (b) purposes
unless it is 'an ultimate disposition of an individual claim
entered in the course of a multiple claims action.'" W.L.
Gore & Assocs., Inc. v. Int'l Med. Prosthetics Research
Assocs., Inc., 975 F.2d 858, 8620863 (citing Sears, Roe-
buck & Co. v. Mackey, 351 U.S. 427, 432 (1956». We
agree with Warsaw that even assuming Rule 54(b) would
give this court jurisdiction over a claim that is "final
except for an accounting" within the meaning of 28 U.s.C.
§ 1292(c)(2), the case is not "final" because the district
court has not yet determined ongoing royalties. An ongo-
ing royalty is not the same as an accounting for damages.
See Special Devices, Inc. v. Oea, Inc., 269 F.3d 1340, 1343
n.2 (Fed. Cir. 2001) ("'Accounting,' as used in [§
3 WABBAW ORTHOPEDIC v. NUVASlVE

1292(c)(2)], refers to infringement damages pursuant to
28 U.S.C. § 284.").
Accordingly,
IT Is ORDERED THAT:
(1) The motion is granted. The appeal is dismissed.
(2) Each side shall bear its own costs.
FOR THE COURT

AUG 022012 lsI Jan Horbaly
Date Jan Horbaly
Clerk

U.s~Yl~FOR
THE FEDERAL CIRCUIT
cc: Luke L. Dauchot, Esq.
Frank E. Scherkenbach, Esq. AUG 022012
s24 JAN HlllBALV
CLmK
Issued As A Mandate: _A_U_G_O_2_2_01_2_ _