Regents of the Univ. Of California v. Dako North America

United States Court of Appeals for the Federal Circuit
Miscellaneous No.842
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
ABBOTT MOLECULAR INC., and ABBOTT LABORATORIES INC.,
Plaintiffs-Petitioners,
v.
DAKO NORTH AMERICA, INC. and DAKO A/S,
Defendants-Respondents.
Lynn H. Pasahow, Fenwick & West LLP, of Mountain View, California, for
plaintiffs-petitioners. Of counsel were Carolyn Chang, C.J. Alice Chuang, Virginia K.
DeMarchi, and Heather N. Mewes.
Thomas H. Jenkins, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, of
Washington, DC for defendants-respondents. Of counsel were David C. Hoffman, Tina
E. Hulse, Richard J. Smith, and Anthony C. Tridico.
On Petition for Permission to Appeal from United States District Court Northern District
of California in 05-CV-03955.
Chief Judge Marilyn Hall Patel
United States Court of Appeals for the Federal Circuit
MISCELLANEOUS DOCKET NO. 842
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
ABBOTT MOLECULAR INC., and ABBOTT LABORATORIES INC.,
Plaintiffs-Petitioners,
v.
DAKO NORTH AMERICA, INC. and DAKO A/S,
Defendants-Respondents.
ON PETITION FOR PERMISSION TO APPEAL
Before LOURIE, Circuit Judge, CLEVENGER, Senior Circuit Judge, and MOORE,
Circuit Judge.
LOURIE, Circuit Judge.
ORDER
The Regents of the University of California et al. (the University) petition for
permission to appeal an order involving claim construction certified by the United States
District Court for the Northern District of California as one involving a controlling issue of
law as to which there is substantial ground for difference of opinion and for which an
immediate appeal may materially advance the ultimate termination of the litigation. See
28 U.S.C. § 1292(b), (c)(1). The University states that Dako North America, Inc. et al.
(Dako) consent.
In two cases now on appeal in this court, the University has sought review of the
district court’s order denying its motion for a preliminary injunction. In that order, the
district court considered, inter alia, the parties’ arguments concerning claim
construction, made its determination, and denied the motion for a preliminary injunction.
The University appealed from the denial of the motion, and those appeals are now fully
briefed in this court. Oral argument in the pending appeals was postponed at Dako’s
request. After those appeals were filed, based on a more complete record, including
the prosecution history, the district court revisited some of the claim construction issues
that were decided in the pending appeals, and issued an order granting in part and
denying in part Dako’s motion for summary judgment of noninfringement of the two
patents at issue in the pending appeals. The district court certified the order for
permissive appeal, and the University petitions for permission to appeal the order.
Ultimately, this court must exercise its own discretion in deciding whether it will
grant permission to appeal an interlocutory order certified by a trial court. See In re
Convertible Rowing Exerciser Patent Litigation, 903 F.2d 822 (Fed. Cir. 1990); 28
U.S.C. § 1292(d)(2) (“the Federal Circuit may, in its discretion, permit an appeal to be
taken from such order”).
Unlike previous petitions for permission to appeal involving claim construction
issues that were denied, here the district court’s claim construction is already before this
court in the pending appeals regarding the preliminary injunction motion. Any previous
concerns that permitting a 1292(b) appeal might lead to premature reviews, followed by
a later appeal on the same issue after further proceedings in the district court, hence
multiple appeals, are not present here. On the contrary, our consideration of the claim
construction in the present case now in conjunction with the already-pending appeals
would be an efficient use of judicial resources and would facilitate resolution of all of the
claim construction disputes. This is not an ordinary case of claim construction in which,
for example, a district court has decided a claim construction issue and one party
asserts error. Here, the same district court has revisited the claim construction issue
that is before this court. Indeed, were we not to grant the petition, the merits panel in
the pending appeals would be reviewing the district court’s first order based upon the
Misc. 842 -2-
limited record before the district court when it considered the motion for a preliminary
injunction, even though the district court itself has now revisited the issue based upon a
more complete record. Because the matters in the recent order are thus intertwined
with the issues in the pending appeals, we determine that granting the petition in these
unusual circumstances is warranted.
Accordingly,
IT IS ORDERED THAT:
(1) The petition for permission to appeal is granted.
(2) When the present appeal is fully briefed, it will be set for oral argument
with the pending appeals, 2006-1334, -1452.
FOR THE COURT
_Feb 14 2007____ ____s/Alan D. Lourie___
Date Alan D. Lourie
Circuit Judge
cc: Lynn H. Pasahow, Esq.
Richard J. Smith, Esq.
Misc. 842 -3-