Case: 23-1362 Document: 14 Page: 1 Filed: 04/11/2023
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VROOM, INC., VROOM AUTOMOTIVE, LLC, dba
Vroom, dba Texas Direct Auto, CARSTORY, LLC,
VAST.COM, INC., dba CarStory,
Plaintiffs-Appellees
v.
SIDEKICK TECHNOLOGY, LLC,
Defendant-Appellant
______________________
2023-1362
______________________
Appeal from the United States District Court for the
District of New Jersey in No. 2:21-cv-06737-WJM-JSA,
Senior Judge William J. Martini.
______________________
ON MOTION
______________________
Before LOURIE, PROST, and WALLACH, Circuit Judges.
WALLACH, Circuit Judge.
ORDER
Vroom, Inc. et al. (collectively, “Vroom”) move to dis-
miss this appeal for lack of jurisdiction. Sidekick
Case: 23-1362 Document: 14 Page: 2 Filed: 04/11/2023
2 VROOM, INC. v. SIDEKICK TECHNOLOGY, LLC
Technology, LLC opposes the motion. For the following
reasons, we dismiss the appeal as premature.
Vroom filed a complaint at the district court seeking:
(1) a declaration of non-infringement as to 12 of Sidekick’s
patents; (2) a declaration that Vroom is “free and clear to
make, use, offer for sale and sell the functionalities availa-
ble at their websites and/or any corresponding mobile de-
vice application despite any rights [Sidekick] purports to
own,” ECF No. 5 at 90; and (3) an injunction against Side-
kick “from representing to anyone that [Vroom is] infring-
ing on any rights [Sidekick] purports to own,” id. * Sidekick
counterclaimed for patent infringement. Vroom answered
the counterclaim with affirmative defenses, including that
the patent claims are invalid under
35 U.S.C. § 101. Vroom
then moved for judgment on the pleadings based on its
§ 101 argument. On June 28, 2022, the district court
granted that motion and dismissed Sidekick’s counter-
claims with prejudice. Sidekick moved for reconsideration,
which the district court denied on October 18, 2022.
On January 4, 2023, Sidekick contacted the district
court to inquire about the status of the case, and the dis-
trict court entered a docket entry stating “Civil Case Ter-
minated” backdated to June 28, 2022. Sidekick filed a
notice of appeal and moved the district court for entry of
final judgment under Rule 54(b) of the Federal Rules of
Civil Procedure or for certification under
28 U.S.C.
§ 1292(b). On March 21, 2023, the district court denied the
motion, noting that the court dismissed Sidekick’s
* Vroom also sought a finding that this is an excep-
tional case under
35 U.S.C. § 285 and an award of attor-
neys’ fees and costs. The fact that the district court has not
yet acted on that request, however, would not preclude ju-
risdiction over an otherwise appealable judgment. See
Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC,
927 F.3d 1292, 1303–04 (Fed. Cir. 2019).
Case: 23-1362 Document: 14 Page: 3 Filed: 04/11/2023
VROOM, INC. v. SIDEKICK TECHNOLOGY, LLC 3
counterclaims “as an invalid patent [claim] cannot be in-
fringed” and that it “appear[s] that the Court . . . already
entered final judgment on the merits.” ECF No. 11 at 5.
This court’s jurisdiction generally extends only to a “fi-
nal decision of a district court,”
28 U.S.C. § 1295(a)(1), i.e.,
one that “ends the litigation on the merits and leaves noth-
ing for the court to do but execute the judgment,” Catlin v.
United States,
324 U.S. 229, 233 (1945). Here, while the
district court is correct that its order granting Vroom’s mo-
tion for judgment on the pleadings necessarily resolved
Vroom’s claims for declaratory judgment of non-infringe-
ment, see TypeRight Keyboard Corp. v. Microsoft Corp.,
374
F.3d 1151, 1157 (Fed. Cir. 2004) (“[A] judgment of invalid-
ity necessarily moots the issue of infringement.”), at least
Vroom’s request for injunctive relief remains pending, ren-
dering this appeal premature. See Liberty Mut. Ins. Co. v.
Wetzel,
424 U.S. 737, 744–45 (1976); Henrietta D. v. Giuli-
ani,
246 F.3d 176, 180 (2d Cir. 2001) (noting that a decla-
ration does not have the effect of a final judgment “when
other remedial issues remain unresolved”).
We therefore grant the motion to dismiss and expect
the parties and the district court to promptly resolve the
outstanding request for relief.
Accordingly,
IT IS ORDERED THAT:
(1) The motion is granted to the extent that the appeal
is dismissed for lack of jurisdiction, subject to reinstate-
ment under the same docket number without the payment
of an additional filing fee if, within 60 days of the date of
filing of this order, Sidekick appeals from a final judgment
entered on the entire case or a judgment entered under
Rule 54(b) of the Federal Rules of Civil Procedure.
Case: 23-1362 Document: 14 Page: 4 Filed: 04/11/2023
4 VROOM, INC. v. SIDEKICK TECHNOLOGY, LLC
(2) Each side shall bear its own costs.
FOR THE COURT
April 11, 2023 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
