Timothy L. Taylor, Plaintiff-Respondent v. Ppg Industries, Inc., Defendant-Petitioner , 256 F.3d 1315 ( 2001 )

MAYER, Chief Judge,

dissenting.

To permit an immediate appeal of an interlocutory order, a district court may certify that its ruling “involves a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation ...” 28 U.S.C. § 1292(b). The decision to grant such a petition is within our complete discretion. In re Convertible Rowing Exerciser Patent Litig., 903 F.2d 822 (Fed.Cir.1990). I would deny the petition for permission to appeal. An interlocutory appeal of this portion of the case prematurely addresses issues that will only fully ripen at trial, will provide no assurance of streamlining the litigation, and will force Taylor to immediately defend an appeal on a point of law that presents a case of first impression for our court that could extend our existing precedent. This court should husband its resources and allow interlocutory appeals only in extraordinary circumstances. By its permissiveness in this appeal, the court makes it extremely difficult to differentiate among worthy and unworthy appeals.

PPG argues that this case presents “substantial ground for difference of opinion” because Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318, 1335 (Fed.Cir.1998) (holding that federal patent laws preempt state laws such that, absent proof of bad faith, a patentee cannot be held hable for publicizing his patents and putting infringers on notice of his patent rights), overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed.Cir.1999), should be extended to insulate a party alleging co-ownership of a patent from state law liability for such an assertion absent proof of bad faith. PPG also argues that an immediate appeal will “materially advance” the resolution of the litigation because it may be dispositive, or may at least provide guidance to the trial court as to correct jury instructions on bad faith; and it conserves judicial resources since Taylor has appealed the district court’s summary judgment dismissing his antitrust claims and California and Pennsylvania state law claims.

PPG’s arguments are not persuasive. First, it implies that all of Taylor’s Louisiana law counterclaims — fraud, detrimental reliance, unfair trade practices and conversion — rest on PPG’s assertion that it is entitled to co-ownership of the Taylor patent. However, Taylor has alleged the additional factual bases of (1) PPG’s refusal to sell Taylor’s prospective business partner, GemChem, a chemical necessary for the invention (as well as other acts that allegedly severed the relationship between Taylor and GemChem); (2) Taylor’s detrimental reliance on PPG’s patent attorney’s representation that PPG had no patentable claim to his invention; as well as, (3) PPG’s communication of its claim of co-ownership of the patent to GemChem. Therefore, early resolution of the state law causes of action resting upon PPG’s statements of co-ownership will not “clean up” the litigation below because the remainder of the factual bases still need to be tried. Second, as PPG admits, this is a case of first impression for the Federal Circuit. The equities weigh against straining the resources of an individual plaintiff to respond to an immediate appeal solely to consider expanding existing law. Third, this litigation may very well be appealed again after the district court’s ruling on the declaratory judgment of co-ownership, and we can address this issue at that time. Moreover, the record will be clearer at' that point if PPG is adjudged to be a co-owner. PPG’s good or bad faith will likely already be addressed on the record below, because “immoral, unethical, oppressive, unscrupulous, or substantially injurious” (i .e., “bad faith”) conduct is necessary to prove an unfair trade practices claim under Louisiana law, Landrum v. Bd. of Comm’rs of the Orleans Levee Dist., 685 So.2d 382, 389 (La.App.4th 1997) (citations omitted), and proof of misrepresentation with “intent to defraud or gain an unfair advantage” (again, a form of bad faith) is an element of a fraud claim, Murphy’s Welding Serv., Inc. v. Bayou Concessions Salvage, Inc., 780 So.2d 1284, 1288 (La. App. 4th 2001).

Finally, as to whether there are substantial grounds for difference of opinion on the law, Taylor presents strong arguments that the preemption rationale of Hunter Douglas (as well as Zenith Elec. Corp. v. Exzec, Inc., 182 F.3d 1340, 1355 (Fed.Cir. 1999) and Dow Chem. Co. v. Exxon Corp., 139 F.3d 1470, 1475 (Fed.Cir.1998)) was premised upon the patent laws’ governance of the rights and obligations of an existing patentee, rather than an individual without recognized legal rights to the patent. PPG has not articulated a rationale for immunizing extra-judicial allegations of patent co-ownership from state tort liability via preemption, or shown that all of the elements of Taylor’s state causes of action are included within a federal claim. Certainly, the patent laws do not protect or impose an obligation on one who alleges co-ownership of a patent to make such extra-judicial statements to a third party. Therefore, Taylor should have the right to try his Louisiana law claims before a jury before having to defend an appeal to invalidate the district court’s order based on an argument to extend existing law.