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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December 28, 1995 [NOT FOR PUBLICATION]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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Document Info
Docket Number： 95-1793
Filed Date： 12/28/1995
Precedential Status： Precedential
Modified Date： 9/21/2015