Robert Bosch, Llc v. Pylon Manufacturing Corp.

United States Court of Appeals
for the Federal Circuit
______________________
ROBERT BOSCH, LLC,
Plaintiff-Appellant,
v.
PYLON MANUFACTURING CORP.,
Defendant Cross Appellant.
______________________
2011-1363, -1364
______________________
Appeal from the United States District Court for the
District of Delaware in No. 08-CV-0542, Judge Sue L.
Robinson.
______________________
Decided: June 14, 2013
______________________
MARK A. HANNEMANN, Kenyon & Kenyon, LLP, of
New York, New York, argued for plaintiff-appellant on
rehearing en banc. With him on the brief was JEFFREY S.
GINSBERG. Of counsel on the brief was SUSAN A. SMITH, of
Washington, DC. Of counsel was RYAN J. SHEEHAN of
New York, New York.
GARRET A. LEACH, Kirkland & Ellis, LLP, of Chicago,
Illinois, argued for defendant-cross appellant on rehearing
en banc. With him on the brief were MARK A. PALS and
DENNIS J. ABDELNOUR. Of counsel were GREGORY L.
HILLYER, Feldman Gale, P.A., of Miami, Florida, JAVIER
2 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
SOBRADO, of Bethesda, Maryland and CHRISTOPHER R.
LIRO, Andrus, Sceales, Starke & Sawall, of Milwaukee,
Wisconsin.
EDWARD R. REINES, Weil Gotshal & Manges LLP, of
Redwood Shores, California, for amicus curiae American
Intellectual Property Law Association, on rehearing en
banc. With him on the brief was ANDREW L. PERITO. Of
counsel on the brief was WILLIAM G. BARBER, President,
American Intellectual Property Law Association, of Ar-
lington, Virginia.
ROBERT P. TAYLOR, Arnold & Porter LLP, of San
Francisco, California, for amicus curiae Intellectual
Property Owners Association on rehearing en banc. With
him on the brief were MONTY M. AGARWAL and JAMES A.
FOX. Of counsel on the brief were RICHARD F. PHILLIPS,
President, and KEVIN H. RHODES, Chair, Intellectual
Property Owners Association. Of counsel was HERBERT C.
WAMSLEY, JR., of Washington, DC.
CHARLES W. SHIFLEY, Banner & Witcoff, Ltd., of Chi-
cago, Illinois, for amicus curiae The Intellectual Property
Law Association of Chicago on rehearing en banc.
ROBERT M. EVANS, JR., Senniger Powers LLP, of St.
Louis, Missouri, for amicus curiae MEMC Electronic
Materials, Inc. on rehearing en banc. With him on the
brief was MARC W. VANDER TUIG.
RAYMOND T. CHEN, Solicitor, United States Patent &
Trademark Office, of Alexandria, Virginia, for amicus
curiae United States of America on rehearing en banc.
With him on the brief were MICHAEL S. FORMAN and
THOMAS W. KRAUSE, Associate Solicitors. Of counsel on
the brief were STUART F. DELERY, Acting Assistant Attor-
ney General, and MARK R. FREEMAN, Attorney, Appellate
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 3
Staff, Civil Division, United States Department of Justice,
of Washington, DC.
______________________
Before RADER, Chief Judge, NEWMAN, LOURIE, DYK,
PROST, MOORE, O'MALLEY, REYNA, and WALLACH, Circuit
Judges. ∗
Opinion for the court filed by Circuit Judge PROST, in
which RADER, Chief Judge, NEWMAN, LOURIE, and DYK,
Circuit Judges join. MOORE, Circuit Judge joins Part I of
the opinion.
Opinion concurring-in-part and dissenting-in-part filed by
MOORE, Circuit Judge.
Opinion concurring-in-part and dissenting-in-part filed by
REYNA, Circuit Judge.
Dissenting opinion filed by O’MALLEY, Circuit Judge, in
which WALLACH, Circuit Judge joins.
PROST, Circuit Judge.
We sua sponte took this case en banc to answer two
questions. First, does 28 U.S.C. § 1292(c)(2) confer juris-
diction on this court to entertain appeals from patent
infringement liability determinations when a trial on
damages has not yet occurred? Second, does 28 U.S.C.
§ 1292(c)(2) confer jurisdiction on this court to entertain
appeals from patent infringement liability determinations
when willfulness issues are outstanding and remain
undecided? We answer both questions in the affirmative
and return the case to the panel for disposition on the
merits.
∗
Circuit Judge Taranto did not participate in this
decision.
4 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
BACKGROUND
In August 2008, Robert Bosch, LLC (“Bosch”) sued Py-
lon Manufacturing Corp. (“Pylon”) for patent infringe-
ment. Pylon later asserted patent infringement
counterclaims against Bosch. During the pretrial period,
Pylon filed a motion requesting that the district court
bifurcate the issues of liability and damages. In ruling on
the motion, the district court stated that “bifurcation is
appropriate, if not necessary, in all but exceptional patent
cases,” and issues related to a damages trial are “a drain
on scarce judicial resources.” Robert Bosch LLC v. Pylon
Mfg. Corp., 1:08-CV-542, slip op. at 1 (D. Del. Aug. 26,
2009) (“Memorandum Opinion”). With respect to willful-
ness, the court determined that “willfulness is a damages
issue, not a liability issue,” and willfulness “requires
qualitatively and quantitatively different proof than does
infringement.” Memorandum Opinion at 3. Accordingly,
the district court granted the motion and stayed discovery
on damages issues including willfulness. As of this writ-
ing, proceedings on damages issues remain stayed in the
district court.
Following a jury trial on liability and motions for
judgment as a matter of law, the district court entered
judgment on the liability issues. Bosch appealed and
Pylon cross-appealed. Bosch filed a motion to dismiss
both its appeal and Pylon’s cross-appeal on the grounds
that we lack jurisdiction, which this court denied. Bosch
sought reconsideration of its motion, which was also
denied. On July 9, 2012, the parties argued the substan-
tive as well as jurisdictional issues before a panel of this
court. After oral argument, we sua sponte granted a
rehearing en banc to determine whether we have jurisdic-
tion over this appeal under 28 U.S.C. § 1292(c)(2).
DISCUSSION
This court’s jurisdiction is governed by the final
judgment rule. See, e.g., 28 U.S.C. § 1295(a)(1) (granting
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 5
this court jurisdiction over any “appeal from a final deci-
sion of a district court of the United States . . . in any civil
action arising under . . . any Act of Congress relating to
patents”). Under the final judgment rule, a party may not
take an appeal “until there has been a decision by the
district court that ends the litigation on the merits and
leaves nothing for the court to do but execute the judg-
ment.” Firestone Tire & Rubber Co. v. Risjord, 449 U.S.
368, 373 (1981) (citations omitted). There are, however,
exceptions to the final judgment rule. For instance,
§ 1292(c)(2) provides one such exception, which is unique
to patent cases. Under § 1292(c)(2), an appeal to this
court may be made “from a judgment in a civil action for
patent infringement which would otherwise be appealable
to the United States Court of Appeals for the Federal
Circuit and is final except for an accounting.” The disposi-
tion of this case turns on the meaning of “accounting,”
specifically, whether a trial on damages and willfulness is
an accounting for the purposes of § 1292(c)(2).
I
In addressing the question of whether we have juris-
diction to entertain an appeal when a trial on damages
has not yet occurred, we first consider the issue of wheth-
er an accounting includes the determination of a patent-
ee’s damages. We then consider whether an accounting
may include a trial on damages or whether it is limited to
proceedings before a special master. With respect to the
first issue, Bosch presses the argument that an account-
ing under § 1292(c)(2) is limited to an accounting of an
infringer’s profits and cannot include a determination of
damages. We cannot agree with Bosch. It is clear from
the case law and the history of the statute that an ac-
counting includes both the determination of an infringer’s
profits as well as a patentee’s damages. Bosch also ar-
gues that whatever an accounting is, it cannot be a trial
on damages. Again, we disagree. We find that neither
the text nor the history of the statute supports this nar-
6 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
row interpretation. Rather, an “accounting” within the
meaning of § 1292(c)(2) may include a trial on damages.
A
In accordance with established precedent, we begin
our inquiry by ascertaining the historical meaning of an
“accounting.”
It is a well-established rule of construction that
“‘[w]here Congress uses terms that have accumu-
lated settled meaning under . . . the common law,
a court must infer, unless the statute otherwise
dictates, that Congress means to incorporate the
established meaning of these terms.’” Nationwide
Mut. Ins. Co. v. Darden, 503 U.S. 318, 322, 112
S.Ct. 1344, 117 L.Ed.2d 581 (1992) (quoting
Community for Creative Non-Violence v. Reid, 490
U.S. 730, 739, 109 S.Ct. 2166, 104 L. Ed. 2d 811(1989)); see Standard Oil Co. of N.J. v. United
States, 221 U.S. 1, 59, 31 S.Ct. 502, 55 L. Ed. 619(1911) (“[W]here words are employed in a statute
which had at the time a well-known meaning at
common law or in the law of this country, they are
presumed to have been used in that sense”).
Neder v. United States, 527 U.S. 1, 21-22 (1999); see also
Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2246
(2011) (reiterating this principle of statutory construc-
tion). Bosch argues that historically an accounting in-
cluded only the ascertainment of an infringer’s profits,
while Pylon argues that an accounting included a trial on
damages, including the determination of willfulness.
It is true, as Bosch contends, that the meaning of ac-
counting in patent cases once referred only to the equita-
ble accounting of an adjudged infringer’s profits. 1 In
1 An infringer’s profits are, of course, no longer an
available remedy for the infringement of a utility patent.
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 7
1853, the Supreme Court in Livingston v. Woodworth
examined the traditional accounting proceeding and held
that damages could not be awarded in an equitable ac-
counting. 56 U.S. 546, 560 (1853). The special master in
Livingston admitted “that the account [was] not con-
structed upon the basis of actual gains and profits ac-
quired by the defendants by the use of the inhibited
machine, but upon the theory of awarding damages to the
complainants for an infringement of their monopoly.” Id.
at 559. The special master found that the defendants
were “trespassers and wrongdoers, in the legal sense” and
“double[d] the amount which he had stated to be a com-
pensation to the plaintiffs.” Id. The Livingston Court
found this improper, stating, “[w]e are aware of no rule
which converts a court of equity into an instrument for
the punishment of simple torts.” Id. The Court ques-
tioned whether “the infliction of damages, by way of
penalty, [was] ever consistent with the practice of courts
of equity” and, accordingly, limited the accounting “to the
actual gains and profits of the [infringers].” Id. at 560.
It bears mention that these historical accountings
were very much true to their name in that they generally
applied accountancy principles to ascertain the actual
profits of an adjudged infringer. The case of Providence
Rubber Co. v. Goodyear illustrates this point. 76 U.S. 788(1869). In that case, “[t]he Circuit Court decreed that the
Providence Company was liable ‘for all the profits made in
violation of the rights of the complainants, under the
patent aforesaid, by respondents, by the manufacture,
use, or sale of any of the articles named in said bill.’” Id.
at 801-02. The Court found that “[t]his was in accordance
with the rule in equity cases established by this court.”
Id. at 801 (citing Livingston v. Woodworth, 56 U.S. 546See 35 U.S.C. § 284. Such profits, however, remain avail-
able in cases of design patent infringement. See 35 U.S.C.
§ 289.
8 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
(1853)). Justice Swayne, writing for the Court, went on to
describe an accounting in detail, stating:
The profits made in violation of the rights of the
complainants’ in this class of cases, within the
meaning of the law, are to be computed and ascer-
tained by finding the difference between cost and
yield. In estimating the cost, the elements of price
of materials, interest, expenses of manufacture
and sale, and other necessary expenditures, if
there by any, and bad debts, are to be taken into
the account, and usually nothing else. The calcu-
lation is to be made as a manufacturer calculates
the profits of his business. ‘Profit’ is the gain
made upon any business or investment, when
both the receipts and payments are taken into the
account.
Id. at 804.
Hence, at least from 1853, an accounting applied basic
accountancy principles and did not include the calculation
of damages, but rather was restricted “to the actual gains
and profits of the [infringers].” Livingston, 56 U.S. at 560.
The rule of Livingston was, however, short lived.
Congress nullified this aspect of Livingston in the
1870 Patent Act by authorizing the award of damages by
a court sitting in equity. Act of July 8, 1870, Ch. 230,
§ 55, 16 Stat. 201 (“[T]he claimant [complainant] shall be
entitled to recover, in addition to the profits to be ac-
counted for by the defendant, the damages the complain-
ant has sustained thereby . . . .”). Following the 1870
Patent Act, courts regularly used the terms “account” and
“accounting” to refer to the special master’s determination
of both an adjudged infringer’s profits and a patentee’s
damages. See, e.g., Cornely v. Marckwald, 131 U.S. 159,
160 (1889) (referring to the district court’s “ordering a
reference to a master to take an account of profits and
damages”); Smith v. Vulcan Iron Works, 165 U.S. 518, 524
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 9
(1897) (upholding the ability of adjudicated infringer to
take immediate appeal from an injunction prior to special
master’s “account of profits and damages”); Henry v. A.B.
Dick Co., 224 U.S. 1, 41 (1912) (referring to “an account-
ing for damages for past infringement” in a patent case);
Westinghouse Elec. & Mfg. Co. v. Wagner Elec. & Mfg. Co.,
225 U.S. 604, 608 (1912) (“The case was therefore referred
to a master to state an account of damages and profits . . .
.”); Lovell-McConnell Mfg. Co. v. Automobile Supply Mfg.
Co., 235 U.S. 383, 386 (1914) (referring to “an accounting
for damages and profits” in a patent case); Yesbera v.
Hardesty Mfg. Co., 166 F. 120, 121 (6th Cir. 1908) (“[A]
reference to the master to take an account of profits and
damages was included in the decree.”); Andrews v.
Creegan, 7 F. 477, 478 (C.C.S.D.N.Y. 1881) (“[T]he act of
1870 (Rev. St. Sec. 4921) provides for an accounting for
damages as well as profits, and there may be damages to
be accounted for in this case.”). Accordingly, after 1870,
an accounting included both the determination of a pa-
tentee’s damages as well as an adjudged infringer’s prof-
its.
We note that, during this period, the calculation of a
patentee’s damages as part of an accounting included lost
profits due to diversion of sales or due to price erosion.
See Cornely, 131 U.S. at 160-61. Likewise, a patentee
could also prove its damages by showing established
royalties. Rude v. Westcott, 130 U.S. 152, 165 (1889) (“It
is undoubtedly true that where there has been such a
number of sales by a patentee of licenses to make, use,
and sell his patents as to establish a regular price for a
license, that price may be taken as a measure of damages
against infringers.”).
An accounting at this time, however, did not allow for
the award of a reasonable royalty as the measure of a
patentee’s damages. In Rude v. Westcott, the Court
rejected the award of a “conjectural” royalty as part of an
accounting, stating:
10 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
“Actual damages must be calculated, not imag-
ined, and an arithmetical calculation cannot be
made without certain data on which to make it.”
There was no question in this case of damages
arising from lost sales, or injurious competition,
for no machines had been manufactured and put
on the market by the patentee, or by the com-
plainants, his assignees. No legal ground being
shown for the recovery of specific damages for the
alleged infringement of the patents, the decree
must be reversed.
Id. at 167 (quoting Mayor, Aldermen & Commonalty of
City of New York v. Ransom, 64 U.S. 487, 488 (1859)); see
also Coupe v. Royer, 155 U.S. 565, 583 (1895). This rule
created some mischief because actual damages were then,
as they are now, often difficult to prove. Eventually, the
courts of appeals began to allow the calculation of a
reasonable royalty as part of an accounting. See U.S.
Frumentum Co. v. Lauhoff, 216 F. 610, 625 (6th Cir. 1914)
(“[A] ‘reasonable royalty,’ if the proper foundation is laid
and if the primary measures cannot be adopted, may
become the applicable criterion in an action at law. If this
is true, the same result follows before a master in deter-
mining damages in an action in equity.”). This practice
was ultimately sanctioned by the Supreme Court in
Dowagiac Manufacturing Co. v. Minnesota Moline Plow
Co., 235 U.S. 641, 648-50 (1915). In 1922, Congress
expressly allowed for a reasonable royalty to be awarded
in a case in equity by amending the statute to state “the
court may adjudge and decree the payment by the de-
fendant to the complainant of a reasonable sum as profits
or general damages for the infringement.” Act of Feb. 21,
1922, Ch. 58, 42 Stat. 392. Accordingly, as early as 1922,
Congress had allowed for an accounting to include the
determination of an adjudged infringer’s profits and a
patentee’s damages, including lost profits and a reasona-
ble royalty.
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 11
It was against this backdrop that Congress, in 1927,
enacted the predecessor statute to § 1292(c)(2)—28 U.S.C.
§ 227a—to confer interlocutory appellate jurisdiction over
patent infringement judgments that were final except for
“an accounting.” The original statute provided that,
“when in any suit in equity for the infringement of letters
patent for inventions, a decree is rendered which is final
except for the ordering of an accounting, an appeal may
be taken from such decree to the circuit court of appeals.”
28 U.S.C. § 227a (1927). The Senate Report accompany-
ing § 227a indicates that Congress understood an “ac-
counting” to include both the calculation of the
defendant’s profits and the plaintiff’s damages:
Under the present statutes where an equity suit
for infringement of letters patent results in a de-
cree for the plaintiff, if the patent at the time of
entry of the decree is still alive, the court orders
an injunction to restrain further infringement and
refers the cause to a master to ascertain plaintiff’s
damages and defendant’s profits. Upon the entry
of such a decree an appeal from the order granting
the injunction may be taken immediately, and it is
the general practice to suspend all proceedings
under the accounting until the court of appeals
has determined the questions of validity of the pa-
tent and infringement. If the court holds against
the plaintiff on either of these questions, it re-
verses the decree of the lower court, and there is,
of course, no accounting.
S. Rep. No. 69-1319, at 1 (1927). Thus, Congress gave the
term “accounting” its judicially settled meaning (i.e.,
proceedings before a special master to determine the
infringer’s profits and the plaintiff’s damages) when it
enacted § 227a.
After the enactment of § 227a, the Supreme Court
consistently referred to an accounting as a proceeding
12 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
that includes the determination of both profits and dam-
ages. See McCullough v. Kammerer Corp., 331 U.S. 96, 97
(1947) (recounting that the district court ordered “[a]n
accounting for profits and damages”); Gen. Motors Corp. v.
Devex Corp., 461 U.S. 648, 650 (1983) (stating that the
case was “referred to a [s]pecial [m]aster for an account-
ing,” and that the special master “selected a royalty rate
by reference to hypothetical negotiations that it found
would have taken place if GMC had sought to obtain a
license from Devex”) (citations omitted); Graver Tank &
Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271, 276 (1949)
(noting that the district court “concluded that the re-
spondent was entitled to . . . an accounting for profits and
damages”); Edward Katzinger Co. v. Chi. Metallic Mfg.
Co., 329 U.S. 394, 398 (1947) (stating that the district
court “ordered an accounting to determine royalties due
for the period prior to termination of the license contract,
and for infringement damages thereafter”). Prior to the
creation of this court, the regional courts of appeals also
recognized that an accounting included the calculation of
damages. See, e.g., Russell Box Co. v. Grant Paper Box
Co., 179 F.2d 785, 787 (1st Cir. 1950); Maxon Premix
Burner Co. v. Eclipse Fuel Eng’g Co., 471 F.2d 308, 313
n.6 (7th Cir. 1972); Miller Hatcheries v. Buckeye Incubator
Co., 41 F.2d 619, 620 (8th Cir. 1930); Icyclair, Inc., v. Dist.
Court of U.S. for S. Dist. of Cal., Cent. Div., 93 F.2d 625,
626 (9th Cir. 1937). Finally, this court has likewise
repeatedly recognized that an accounting includes the
determination of damages. See, e.g., Special Devices, Inc.
v. QEA, Inc., 269 F.3d 1340, 1343 n.2 (Fed. Cir. 2001)
(“‘Accounting,’ as used in the statute, refers to infringe-
ment damages pursuant to 35 U.S.C. § 284.”); H.A. Jones
Co., Inc. v. KSM Fastening Sys., Inc., 745 F.2d 630, 631
(Fed. Cir. 1984) (finding that “the judgment is final except
for an accounting of damages at a later date”) (citations
omitted).
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 13
The statute’s interpretation through history is clear.
An “accounting” in the context of § 1292(c)(2) includes the
determination of damages and cannot be limited to a
traditional equitable accounting of an infringer’s profits.
In 1927, when Congress first employed the term “account-
ing” in the context now at issue, an accounting was well-
known to include both the calculation of an infringer’s
profits and a patentee’s damages. Accordingly, we must
conclude that an accounting as used in § 1292(c)(2) in-
cludes both determinations. See Standard Oil Co. of N.J.,
221 U.S. at 59.
B
We have established that an accounting includes the
calculation of damages, but our inquiry is not yet finished.
Bosch further maintains that even if an accounting in-
cludes the determination of damages, it cannot be a trial
on damages, but rather an accounting must be limited to
a special master’s determination of damages. According
to Bosch, an accounting was a proceeding before a special
master—available only in courts of equity—and because
juries do not sit in equity, an accounting may not include
a modern jury trial on damages. While we agree with
Bosch that an accounting was historically available in
equity, we do not agree that a trial on damages falls
outside the scope of the accounting described in
§ 1292(c)(2).
We base our conclusion on four points. First, in 1948,
Congress expanded jurisdiction over interlocutory appeals
from cases in equity to “civil actions for patent infringe-
ment which are final except for accounting.” Second, the
issues which were historically decided in accountings are
the same as those decided during damages trials today.
Third, the reasons articulated by Congress for allowing
interlocutory appellate jurisdiction over patent cases that
are final except for an accounting apply with equal force
to a modern damages trial. Finally, stare decisis militates
14 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
in favor of allowing interlocutory appeals where liability
has been established and a damages trial remains.
1
Prior to the merger of law and equity in 1938, an ac-
counting for an infringer’s profits and a patentee’s dam-
ages was available in the courts of equity. See, e.g., Act of
July 8, 1870, Ch. 230, § 55, 16 Stat. 201 (“[U]pon bill in
equity filed by any party aggrieved . . . the claimant
[complainant] shall be entitled to recover, in addition to
the profits to be accounted for by the defendant, the
damages the complainant has sustained thereby . . . .”).
In 1946, however, Congress removed the remedy of the
infringer’s profits and ended the practice of requiring a
traditional accounting of an infringer’s profits before a
special master. The amended statute provided that “the
complainant shall be entitled to recover general damages
which shall be due compensation for making, using, or
selling the invention, not less than a reasonable royalty
therefor.” Act of August 1, 1946, Ch. 726, 60 Stat. 778, 35
U.S.C. § 70. The legislative history of the amendment
indicates that its purpose was to eliminate the necessity
of hearings before special masters. The Congressional
report states:
The object of the bill is to make the basis of recov-
ery in patent-infringement suits general damages,
that is, any damages the complainant can prove,
not less than a reasonable royalty, together with
interest from the time infringement occurred, ra-
ther than profits and damages. . . . Although the
bill would not preclude the recovery of profits as
an element of damages, yet by making it unneces-
sary to have proceedings before masters and em-
powering equity courts to assess general damages
irrespective of profits, the measure represents leg-
islation which in the judgment of the committee is
long overdue.
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 15
See, e.g., H.R. Rep. No. 1587, 79th Cong., 2d Sess. (1946),
adopted as the report of the Senate Committee on Pa-
tents, S. Rep. No. 1503, 79th Cong., 2d Sess. (1946), at 2;
reprinted in U.S. Code Congressional Service (1946) at
1386-87; see also Kori Corp. v. Wilco Marsh Buggies &
Draglines, Inc., 761 F.2d 649, 654 (Fed. Cir. 1985) (“The
legislative history of the 1946 amendments clearly indi-
cates that one of its purposes was to eliminate the neces-
sity of the traditional accounting to determine the
infringer’s profits in all damages determinations, and to
deter the use of such proceedings by successful patentees
to harass the infringer.”).
After the merger of law and equity, and the 1946 revi-
sion to the damages statute, Congress amended the
interlocutory appeal statute by substituting the phrase
“civil actions” for the phrase “suit[s] in equity.” H.R. Rep.
308, 80th Cong., 1st Sess. (1948). That change placed the
statute in essentially its current form: “The courts of
appeals shall have jurisdiction of appeals from . . . .
Judgments in civil actions for patent infringement which
are final except for accounting.” 28 U.S.C. § 1292(4)
(1948). Accordingly, despite having eliminated the possi-
bility of recovering an infringer’s profits, making it un-
necessary to have proceedings before a special master, in
1948, rather than eliminate § 1292’s exception to the final
judgment rule, Congress extended it to civil actions.
The dissent suggests that the “accounting” referred to
in § 1292 identifies not the nature of the issue being
adjudicated but the identity of the adjudicator. In the
dissent’s view, an “accounting” can only be conducted by a
special master in equity, and only such proceedings
constitute an “accounting” within the meaning of the
statute; a damages proceeding before a jury cannot quali-
fy as an accounting. See J. O’Malley Dissenting Op. 14-
16.
16 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
Section 1292 makes no such distinction between a ju-
ry trial on damages and an “accounting.” It is manifestly
incorrect to read such a distinction into the statute. The
Supreme Court’s decision in Dairy Queen, Inc. v. Wood,
369 U.S. 469 (1962), underscores the point that after the
merger of law and equity, the similarity between equita-
ble accountings in infringement cases and traditional
damages calculations meant that even if a proceeding
was, in the traditional sense, an equitable accounting, a
jury trial was nonetheless required. See Dairy Queen, 369
U.S. at 477-79. The fact that a jury trial was required did
not change the nature of the proceeding from an “account-
ing” to something else entirely, however. See id. at 479(“The legal remedy [provided by the jury] cannot be
characterized as inadequate merely because the measure
of damages may necessitate a look into petitioner’s busi-
ness records.”). This point is reinforced by the concurring
opinion of Justices Harlan and Douglas, who noted explic-
itly that the jury right attached even though the only
“‘legal’ claim contained in the complaint” was in fact an
“‘equitable’” claim for “an accounting for alleged trade-
mark infringement.” Id. at 480-81 (Harlan, J., concur-
ring). As Wright and Miller note, “ordinarily there is
[after Dairy Queen] a right to jury trial on a claim for an
accounting.” 9 Charles Alan Wright & Arthur R. Miller,
Federal Practice and Procedure: Civil § 2312, at 164 (3d
ed. 2008). Thus, the fact that juries must now determine
patent damages does not prevent those proceedings from
being “accountings” within the meaning of § 1292.
This is exactly the point of the 1948 amendment to
subsection 1292(c)(2), which recognized that after the
merger of law and equity, an accounting remains an
accounting, regardless of the form of the civil action.
There is simply no basis for concluding, as the dissent
suggests, that Congress in 1948 “narrowed” the scope of
subsection 1292(c)(2) to cover only those rare cases in
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 17
which an accounting could be had before a special master
without a jury trial. See J. O’Malley Dissenting Op. 18.
It is clear that Congress sought to eliminate the tradi-
tional equitable remedy of an accounting of an infringer’s
profits, obviating the need for an equitable accounting
before a special master. 2 It is likewise clear that Con-
gress intended interlocutory review of cases that are final
except for an accounting to remain available. Indeed,
interlocutory review of cases that are final except for an
accounting was to be available not only in suits in equity,
but in civil actions generally. Accordingly, we conclude
that the meaning of an “accounting” in § 1292 includes a
damages trial. 3
2 This is not to say that accountings before special
masters disappeared. Special masters continued to hold
“accountings” following Congress’s elimination of the
traditional equitable accounting. See Gen. Motors, 461
U.S. at 650-51. However, these accountings no longer
bore any resemblance to the traditional equitable account-
ing of an infringer’s profits, but rather included the de-
termination of damages such as a reasonable royalty.
3 This conclusion is well-aligned with the holdings
of several regional courts of appeals, which, following the
merger of law and equity, were faced with the question of
whether despite having pled for an accounting in a patent
case, a plaintiff was entitled to a jury trial under the
Seventh Amendment. See Kennedy v. Lakso Co., 414 F.2d
1249, 1253 (3d Cir. 1969) (“While it is true that equity
traditionally has had jurisdiction in actions for an ac-
counting, it has always been recognized that there may be
a suit for accounting at law and indeed the essential
ingredient of equity’s jurisdiction has been the complicat-
ed nature of the accounting. . . . There is nothing on the
present record to indicate that the accounting between the
parties in the determination of profits or damages will be
18 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
2
As detailed supra, from at least 1922 forward, Con-
gress authorized the determination of an adjudged in-
fringer’s profits and a patentee’s damages, including lost
profits and a reasonable royalty, as part of an accounting
proceeding. In 1946, Congress eliminated recovery of an
adjudged infringer’s profits, “making it unnecessary to
have proceedings before masters and empowering equity
courts to assess general damages irrespective of profits.”
S. Rep. No. 1503, 79th Cong., 2d Sess., at 2 (1946). In
1952, Congress combined the equitable and legal reme-
dies provisions of the statute with the creation of 35
U.S.C § 284. 4 Section 284 states that “[u]pon finding for
the claimant the court shall award the claimant damages
adequate to compensate for the infringement, but in no
event less than a reasonable royalty for the use made of
the invention by the infringer . . . .” Thus, were a tradi-
tional accounting proceeding before a special master to be
held to determine an appropriate remedy under § 284, it
so complicated as to be beyond the power of a jury to
determine.”); AMF Tuboscope, Inc. v. Cunningham, 352
F.2d 150 (10th Cir. 1965) (holding jury trial available
where complaint in patent infringement case sought an
injunction and an “accounting for damages” or treble
damages); Swofford v. B & W, Inc., 336 F.2d 406, 409-11
(5th Cir. 1964) (jury trial held available in patent in-
fringement case where requested relief included an ac-
counting for damages).
4 Prior to the Patent Act of 1952, R.S. § 4919 pro-
vided a remedy at law for damages for patent infringe-
ment, while R.S. § 4921 provided for equitable remedies
including damages. By the Patent Act of 1952, the former
provisions of R.S. 4919 and 4921 relating to damages
were combined in § 284. See the Reviser’s Note repro-
duced in 35 U.S.C.A. following § 284.
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 19
would include the determination of a patentee’s damages
including lost profits or a reasonable royalty, but not the
determination of an adjudged infringer’s profits. These
are the same determinations that are made in a modern
damages trial. The fact that whether damages are de-
termined by a master or a jury, the same issues would be
decided, supports the position that a modern damages
trial may be considered an accounting for the purposes of
§ 1292(c)(2).
3
Congress first passed the predecessor statute to
§ 1292(c)(2) because of the high cost of an “accounting.”
The House Report that accompanies the 1927 amendment
states:
[L]egislation of this nature is needed to prevent a
great burden of expense to litigants in actions to
determine the validity of patents, where an ac-
counting is involved. Under present procedure
appeals may be taken from the interlocutory de-
cree upholding the patent but not until a full ac-
counting has been made to the court. Under this
bill such appeal can be taken from such interlocu-
tory decree . . . so as to obviate the cost of an ac-
counting in the event the case is reversed on
appeal.
H.R. Rep. No. 1890, 69th Cong., 2d Sess. 1 (1927). The
Senate Report underscored this concern stating, “the
whole expense of the accounting is wasted” when an
appellate court reverses on liability after an accounting.
S. Rep. No. 1319, 69th Cong. 2d Sess. (1927); see also
McCullough, 331 U.S. at 98.
This issue remains relevant today. Modern patent
damages trials, with their attendant discovery, are noto-
riously complex and expensive. As the district court put
it, “discovery disputes related to document production on
20 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
damages and the Daubert motion practice related to
damages experts are a drain on scarce judicial resources.”
Memorandum Opinion at 1. Given the substantial rever-
sal rate of liability determinations on appeal, the whole
expense of a damages trial is often wasted. Accordingly,
those policy concerns that motivated Congress to grant
jurisdiction over cases that are final except for an ac-
counting support our holding today.
4
The principle of stare decisis likewise weighs in favor
of our holding. To be sure, because the question we
consider today has not previously been considered by this
court sitting en banc, “the implications of stare decisis are
less weighty than if we were [reconsidering] a precedent
established by the court en banc.” See McKinney v. Pate,
20 F.3d 1550, 1565 n.21 (11th Cir. 1994) (en banc); see
also United States v. Bailey, 36 F.3d 106, 110 (D.C. Cir.
1994) (en banc) (citing McKinney), rev’d on other grounds,
516 U.S. 137 (1995). Indeed, “[t]he province and obliga-
tion of the en banc court is to review the current validity
of challenged prior decisions.” United States v. Aguon,
851 F.2d 1158, 1167 n.5 (9th Cir. 1988) (en banc), rev’d on
other grounds, Evans v. United States, 504 U.S. 255(1992); see also United States v. Anderson, 885 F.2d 1248,
1255 (5th Cir. 1989) (en banc). Nonetheless, “because
[our precedent] represents the established law of the
circuit, a due regard for the value of stability in the law
requires that we have good and sufficient reason to reject
it at this late date.” Bailey, 36 F.3d at 110. Indeed, panel
opinions, like en banc opinions, invoke the principle of
stare decisis. Panel opinions are, of course, opinions of
the court and may only be changed by the court sitting en
banc. It has been the law of this court for at least twenty-
five years that an “accounting” under § 1292 includes a
trial for the determination of damages under § 284. See,
e.g., In re Calmar, Inc., 854 F.2d 461, 464 (Fed. Cir. 1988)
(“Hence it is clear that the purpose of the legislation, §
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 21
1292(c)(2), allowing interlocutory appeals in patent cases
was to permit a stay of a damages trial.”); Trans-World
Mfg. Corp. v. Al Nyman & Sons, Inc., 750 F.2d 1552, 1558
(Fed. Cir. 1984) (following a jury verdict that did not
reach the question of damages, “[t]he court entered a
judgment, final except for an accounting, that the ’497
patent was ‘invalid, void and unenforceable,’ and that the
’099 patent was valid and infringed. . . . [The court]
ordered a new trial to determine the damages from in-
fringement of the ’099 patent, but postponed such trial
pending this appeal.”); Special Devices, Inc. v. QEA, Inc.,
269 F.3d 1340, 1343 n.2 (Fed. Cir. 2001) (“‘Accounting,’ as
used in the statute, refers to infringement damages
pursuant to 35 U.S.C. § 284.”); Cent. Admixture Pharmacy
Servs., Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d
1347, 1353 (Fed. Cir. 2007) (“Since the district court’s
infringement judgment is final as to all issues except for a
determination of damages, we have jurisdiction under 28
U.S.C. § 1292(c)(2).”); Callaway Golf Co. v. Acushnet Co.,
576 F.3d 1331, 1337 (Fed. Cir. 2009) (after a jury trial,
“the court entered judgment tracking the jury’s verdict.
Trial on willfulness and damages was stayed. . . . [W]e
have jurisdiction under 28 U.S.C. § 1292(c)(1) and (2).”).
We do not take our precedent lightly. As the Supreme
Court stated, “stare decisis in respect to statutory inter-
pretation has ‘special force,’ for ‘Congress remains free to
alter what we have done.’” John R. Sand & Gravel Co. v.
United States, 552 U.S. 130, 139 (2008) (citing Patterson
v. McLean Credit Union, 491 U.S. 164, 172-73 (1989).
This court has long recognized that an “accounting”
within the context of § 1292(c)(2) includes a trial on
damages. Bosch’s exhortations notwithstanding, we
decline to depart from that interpretation now.
Nothing in the text or history of the statute, or in the
case law, militates that we adopt Bosch’s narrow interpre-
tation of the statute. Rather, the statute, its history and
policy as well as settled case law indicate—and we now
22 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
hold—that § 1292(c)(2) confers jurisdiction on this court to
entertain appeals from patent infringement liability
determinations when a trial on damages has not yet
occurred.
II
We also took this case en banc to determine whether
§ 1292(c)(2) confers jurisdiction on this court to entertain
appeals from patent infringement liability determinations
when willfulness issues are outstanding and remain
undecided. We hold now that it does.
In bifurcating willfulness from the liability trial, the
district court found that willfulness “requires qualitative-
ly and quantitatively different proof than does infringe-
ment.” Memorandum Opinion at 3. The parties and the
amici dispute the propriety of the court’s action. While we
agree with the district court that willfulness and in-
fringement present different underlying issues and, at
least generally speaking, require different proof, the
disposition of this case does not turn on the interrelated-
ness of the willfulness and infringement issues.
Given the nature of the arguments made by the par-
ties and the amici, we take a moment to explain what this
case is not about. This case does not involve the question
of whether the district court has the authority to bifurcate
the willfulness and infringement issues. As a general
matter, it does. See Fed. R. Civ. P. 42(b). Likewise, we
did not take this case en banc to determine whether the
issues of infringement and willfulness are so interwoven
that trying them separately violates the Seventh Amend-
ment. Precedent of this court, nonetheless, indicates that
it does not. See Voda v. Cordis Corp., 536 F.3d 1311, 1329
(Fed. Cir. 2008). Rather, we took this case en banc to
determine whether we have jurisdiction when willfulness
issues are outstanding and remain undecided. Bifurca-
tion and Seventh Amendment issues are immaterial to
this inquiry. Our jurisdiction is set by Congress and
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 23
Congress has given us jurisdiction over patent cases that
are final except for an accounting. Accordingly, the
disposition of this issue turns on whether an “accounting”
as described in § 1292(c)(2) includes the determination of
willfulness.
As always, we begin with the statute. “[W]here words
are employed in a statute which had at the time a well-
known meaning at common law or in the law of this
country, they are presumed to have been used in that
sense.” Standard Oil Co. of N.J., 221 U.S. at 59. Our
inquiry begins and ends with a determination of the
historical meaning of an “accounting.” Specifically, we
must determine whether at the time the statute was
passed, an accounting included the determination of
willfulness.
Long before the enactment of § 1292(c)(2)’s predeces-
sor statute in 1927, accounting proceedings included the
determination of willfulness by a special master. See, e.g.,
Cornely, 131 U.S. at 160 (“There was an interlocutory
decree . . . ordering a reference to a master to take an
account of profits and damages. The master reported that
the defendant had made a profit of $142.92, by the sale of
26 infringing machines, and that he was not a willful and
deliberate infringer.”); Boesch v. Graff, 133 U.S. 697, 699
(1890) (“After a hearing on the merits, an interlocutory
decree was entered, finding an infringment , and referring
the case to a master for an accounting. . . . The case then
went to the master, who reported that the infringement
was willful, wanton, and persistent . . . .”); Pollock v.
Martin Gauge Co., 261 F. 201, 202 (7th Cir. 1919) (“The
statute (section 9464, U.S. Comp. Stats. 1916) provides for
the punishment of the willful violator. But whether
damages in excess of the compensatory damages shall be
awarded, as well as the amount thereof, must be deter-
mined by the District Court upon the accounting.”); K.W.
Ignition Co. v. Temco Elec. Motor Co., 283 F. 873, 874 (6th
Cir. 1922) (“On the accounting the master found that the
24 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
profits resulting to defendant from its infringement
amounted to $164,431.54 . . . . The master further rec-
ommended an award of punitive damages by reason of the
‘willful and malicious conduct of the defendants.’ The
court increased the master’s award by adding $50,000 for
punitive damages . . . .”); Reed Roller Bit Co. v. Hughes
Tool Co., 12 F.2d 207, 209 (5th Cir. 1926) (as part of an
accounting, the special master “found on the evidence
before him that appellants were willful infringers”).
Bosch is unable to point to anything in the text of the
statute or in the legislative history that would indicate
that when Congress first gave the courts of appeals inter-
locutory jurisdiction over cases that are final except for an
accounting, it intended to disturb the practice of deter-
mining willfulness as part of an accounting. Indeed, after
the enactment of § 1292(c)(2)’s predecessor statute in
1927, courts continued to determine willfulness as part of
an accounting, which occurred after the finding of liabil-
ity. For example, in Pyle National Co. v. Lewin, the
district court held the patents valid and infringed, and
awarded treble damages prior to conducting an account-
ing. 92 F.2d 628, 629, 631 (7th Cir. 1937). An appeal was
then taken to the Seventh Circuit prior to the accounting.
The Seventh Circuit reversed the district court’s finding
with respect to treble damages, stating:
Whether the court was justified in awarding tre-
ble damages as to the [patentee] prior to an ac-
counting of damages and profits to be stated by a
master presents a question not free from doubt.
While we are unable to find any case where the
question has been directly passed upon, yet it
seems to be the universal practice for the District
Court to make such determination only after the
amount and character of the damages have been
stated. A reading of section 70, title 35, U.S.C.A.,
indicates this to be the proper procedure. It will
be noted the section authorizes the court to grant
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 25
injunctions, direct an accounting of profits by the
defendant, and assess damages which the com-
plainant has sustained. This may be done, of
course, by reference to a master. Afterwards in
the same section is found the authority to increase
such damages. We are of the opinion that such
increase should not be allowed until after an ac-
counting has been had.
Id. at 631. Other post-1927 cases confirm that willfulness
may be tried as part of an accounting under § 1292(c)(2).
See Overman Cushion Tire Co. v. Goodyear Tire & Rubber
Co., 66 F.2d 361 (2d Cir. 1933) (affirming enhanced dam-
age award based on master’s findings that infringement
was willful). The Ninth Circuit summarized these cases
in Patterson-Ballagh Corp. v. Moss, stating:
The reason for allowing appeals in patent in-
fringement cases from interlocutory orders under
[a predecessor to § 1292(c)(2)] is to prevent useless
waste of time and money for an accounting where
a patent has been improperly held valid and in-
fringed by a lower court. Determination of ancil-
lary questions relating to the scope of damages,
attorneys’ fees and willful infringement can well
await final judgment. A number of cases have es-
tablished the proposition that it is permissible for
the District Court to determine the question of
willful infringement subsequent to the report of
the Master rather than in the earlier proceedings
upon the issues of validity and infringement. For
example, New England Fibre Blanket Co. v. Port-
land Telegram, 9 Cir., 1932, 61 F.2d 648, certiora-
ri denied 289 U.S. 752, 53 S.Ct. 696, 77 L.Ed.
1497; [Pyle] Nat. Co. v. Lewin, 7 Cir., 1937, 92
F.2d 628; Overman Cushion Tire Co. v. Goodyear
Tire & Rubber Co., 2 Cir., 1933, 66 F.2d 361, cer-
tiorari denied 290 U.S. 681, 54 S.Ct. 119, 78 L.Ed.
587; Anchor Hocking Glass Corp. v. White Cap
26 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
Co., D.C. Del. 1942, 47 F.Supp. 451; Utah Radio
Products Co. v. Delco Appliance Corp.,
D.C.W.D.N.Y. 1938, 24 F.Supp. 328.
201 F.2d 403, 408 (9th Cir. 1953).
In view of the foregoing, it is clear that an accounting,
both prior to and after Congress’s grant of interlocutory
jurisdiction over cases that are final except for an ac-
counting, included the determination of willfulness. We
are in no position to change that well settled meaning
now. Accordingly, we hold that § 1292(c)(2) confers juris-
diction on this court to entertain appeals from patent
infringement liability determinations when willfulness
issues are outstanding and remain undecided.
Finally, we wish to make clear that district courts, in
their discretion, may bifurcate willfulness and damages
issues from liability issues in any given case. District
courts have the authority to try these issues together or
separately just as they have the authority to try all issues
together at the liability stage. They may decide, for
example, for reasons of efficiency due to the commonality
of witnesses or issues in any particular case, that bifurca-
tion is not warranted. District court judges, of course, are
best positioned to make that determination on a case-by-
case basis. Today, we answer only the question of wheth-
er § 1292(c)(2) grants this court jurisdiction over appeals
where the district court has exercised its discretion to
bifurcate the issues of damages and willfulness from those
of liability.
CONCLUSION
For the reasons outlined above, this court answers
each en banc question in the affirmative. We find that 28
U.S.C. § 1292(c)(2) does confer jurisdiction on this court to
entertain appeals from patent infringement liability
determinations when a trial on damages has not yet
occurred. We also find that 28 U.S.C. § 1292(c)(2) confers
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 27
jurisdiction on this court to entertain appeals from patent
infringement liability determinations when willfulness
issues are outstanding and remain undecided. According-
ly, we return this case to the panel for disposition on the
merits.
United States Court of Appeals
for the Federal Circuit
______________________
ROBERT BOSCH, LLC,
Plaintiff-Appellant,
v.
PYLON MANUFACTURING CORP.,
Defendant-Cross-Appellant.
______________________
2011-1363, -1364
______________________
Appeals from the United States District Court for the
District of Delaware in No. 08-CV-0542, Judge Sue L.
Robinson.
______________________
MOORE, Circuit Judge, concurring-in-part and dissenting-
in-part.
I agree with the majority that 28 U.S.C. § 1292(c)(2)
provides us with jurisdiction over district court judgments
that are final except for a determination of damages. But
I cannot join the majority’s holding that § 1292(c)(2) gives
us jurisdiction when willful infringement remains out-
standing. The statute carves out a limited circumstance
in which we have jurisdiction over interlocutory appeals—
specifically, actions that are “final except for an account-
ing.” No reasonable construction of an “accounting” can
encompass the subjective state-of-mind and objective
recklessness inquiries that underpin a willful infringe-
2 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
ment analysis. Because willfulness remains outstanding
before the district court, we lack jurisdiction over this
appeal and I respectfully dissent from the majority’s
contrary holding.
Exceptions to the final judgment rule should be nar-
rowly construed. See Digital Equip. Corp. v. Desktop
Direct, Inc., 511 U.S. 863, 867–68 (1994); Coopers &
Lybrand v. Livesay, 437 U.S. 463, 474 (1978); Cobbledick
v. United States, 309 U.S. 323, 324-25 (1940). That rule
stems from the strong presumption that parties should
raise all issues in a single appeal, rather than inefficiently
litigate their case in pieces. See Firestone Tire & Rubber
Co. v. Risjord, 449 U.S. 368, 374 (1981).
The majority recognizes that in enacting the prede-
cessor to § 1292(c)(2), “Congress gave the term ‘account-
ing’ its judicially settled meaning,” namely proceedings
before a Special Master “to determine the infringer’s
profits and the plaintiff’s damages.” Maj. Op. at 11.
When Congress codified the predecessor to § 1292(c)(2),
an “accounting” was a determination of damages. As the
majority explains, prior to enacting the statute, “courts
regularly used the terms ‘account’ and ‘accounting’ to
refer to the special master’s determination of both an
adjudged infringer’s profits and a patentee’s damages.”
Maj. Op. at 8–9. The Senate Report accompanying the
statute expressly states that an “accounting” is the refer-
ral to a Special Master “to ascertain plaintiff’s damages
and defendant’s profits.” S. Rep. No. 69-1319, at 1 (1927).
Congress could not have been clearer—an appeal can be
had when the case is final but for an accounting—when
all that is left “to ascertain plaintiff’s damages and de-
fendant’s profits.” Id. This construction is consistent
with the general understanding of the term. See, e.g.,
Irving R. Kaufman, Masters in the Federal Courts: Rule
53, 58 COLUM. L. REV. 452, 457 (1958) (“Generally, an
accounting involves a mechanical application of general
investigatory and accounting principles and is often
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 3
required under circumstances where much exploratory
work into books and records is essential.”). Hence, when
there has been a determination of infringement liability
and all that remains is an assessment of the amount of
damages due, a patent case can be appealed. Damages
can properly be bifurcated by the district court and an
appeal of the merits of the liability determination can be
had—the statute clearly allows for this.
The majority, however, exceeds its statutory authority
when it allows an appeal to occur even though no decision
has been reached on a claim of willful infringement.
Whether an infringer acted willfully is not, under any
reasonable construction, part of an “accounting.” To prove
willfulness, the patentee must show that “the infringer
acted despite an objectively high likelihood that its ac-
tions constituted infringement of a valid patent.” In re
Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)
(en banc). “If this threshold objective standard is satis-
fied, the patentee must also demonstrate that this objec-
tively-defined risk . . . was either known or so obvious
that it should have been known to the accused infringer.”
Id. The willfulness determination requires the fact finder
to consider the state of mind of the infringer as well as the
reasonableness of the defenses it presented. Certainly the
plain meaning of the term “accounting” does not include a
determination of intent and whether it was reasonable to
rely upon certain noninfringement or invalidity defenses.
The determination of willfulness is no more a calculation
of damages then the determination of infringement liabil-
ity. The plain meaning of “accounting” simply cannot
support what the majority seeks to do and the legislative
history fully supports the plain meaning.
The majority defends its contorted definition of “ac-
counting” on the ground that that a handful of past cases
establish that “willfulness may be tried as part of an
accounting.” Maj. Op. at 25. None of those cases, howev-
er, establish that Congress understood that an accounting
4 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
includes the substantive determinations of knowledge,
intent and reasonableness. In fact, none of those cases
even hold that a determination of willfulness is part of an
accounting. At most, the majority’s cases loosely state in
the background that a Special Master performed an
“accounting” and also determined willful infringement.
E.g., Cornely v. Mackwald, 131 U.S. 159, 160 (1889)
(stating that the district court referred the case to a
master to “take an account of profits and damages,” and
the master reported that the infringement was not “will-
ful and deliberate”). But Special Masters often performed
more than a strict “accounting” in patent infringement
actions brought in equity. In Los Angeles Brush Manufac-
turing v. James, for example, the Court upheld a district
court’s referral of “all matters of fact and law” to a Special
Master, which could include damages and willful in-
fringement. 272 U.S. 701, 703, 706–08 (1927). And it was
not unique for proceedings before a Special Master in
patent infringement actions to include more than a strict
“accounting.” See Neale, Inc. v. McCormick, 19 F.2d 320,
321 (9th Cir. 1927) (finding that judges in the Southern
District of California had, over a one year period, referred
30 out of 40 patent infringement actions to a Special
Master for hearing). In light of this uncertainty, we
should not let a handful of cases with loose language
cause us to ignore the plain meaning of § 1292(c)(2) and
gut the final judgment rule.
The circuit court case upon which the majority princi-
pally relies does not show that the plain meaning of
“accounting” included a determination of willfulness. The
majority asserts that Pyle National Co. v. Lewin, 92 F.2d
628 (7th Cir. 1937), shows that willfulness was “part of an
accounting.” Maj. Op. at 24–25. But Pyle does not discuss
willfulness. Pyle holds that the court should not decide to
treble damages until after it has determined how much
the damages are. 92 F.2d at 631-32. The Pyle court held
that the amount to enhance compensatory damages is
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 5
part of the accounting. Id. at 632. I agree. To determine
how much a compensatory award ought to be enhanced,
you must first know the amount of the compensatory
award and this can properly be considered part of an
accounting. To be clear, after the fact finder has deter-
mined that the infringer was willful, then the court (not
the fact finder) determines whether to enhance damages
and by how much. This determination, the amount by
which the damages ought to be enhanced, is separate
from the determination of willfulness. In fact, in many
cases where the fact finder has found the infringer willful,
the court does not enhance the compensatory damages at
all. This is the inquiry, how much to enhance damages,
that Pyle referred to. 1 And this inquiry, the amount of
enhanced damages to award, could reasonably be consid-
ered part of an accounting; but not the predicate finding
of willfulness which is like the predicate finding of in-
fringement itself.
Indeed, many cases during the relevant time period
give the term “accounting” its plain and ordinary mean-
ing—the determination of damages. See, e.g., Artmoore
Co. v. Dayless Mfg. Co., 208 F.2d 1, 2–3 (7th Cir. 1953)
(explaining that the district court referred the case to a
Special Master for “an accounting” after the court first
found that the defendants’ actions constituted “willful and
1 The majority also relies upon Patterson-Ballagh
Corp. v. Moss, 201 F.2d 403, 408 (9th Cir. 1953). Like
Pyle, it does not establish that an “accounting” included a
determination of willfulness. Patterson-Ballagh instead
explains that “it is permissible for the District Court to
determine the question of willful infringement subsequent
to the report of the Master.” 201 F.2d at 408 (emphasis
added) (collecting cases). Like Pyle, Patterson-Ballagh
tends to show that a determination of willful infringement
is not part of a Special Master’s “accounting.”
6 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
wanton infringement”); Helfrich v. Solo, 59 F.2d 525, 525
(7th Cir. 1932) (stating that the patentee sought, “[i]n
addition to . . . an accounting for the infringement,” treble
damages based on “the wanton and aggravated character
of the infringement”); Rockwood v. Gen. Fire Extinguisher
Co., 37 F.2d 62, 62–63, 66 (2d Cir. 1930) (treating an
accounting as different from the determination to increase
the Special Master’s determination of damages because
“[t]he infringement was not wanton and deliberate”); Sw.
Tool Co. v. Hughes Tool Co., 98 F.3d 42, 43, 45–46 (10th
Cir. 1938) (upholding the district court’s pre-accounting
finding that a defendant had “willfully and knowingly
participated in the acts of infringement”).
Lacking any compelling authority contrary to the
plain meaning of § 1292(c)(2), I cannot conclude that an
“accounting” includes a determination of willful infringe-
ment. An “accounting” entails numerical calculations, not
an inquiry into a party’s state of mind in the face on an
objectively high risk of infringement. Once a finding of
willfulness has been made, the determination of whether
and how much to enhance damages could certainly be
considered part of an accounting. Similarly, once liability
has been determined, the amount of damages can be part
of an accounting. But just as the underlying liability
determination, i.e. the finding of infringement, is not part
of the accounting, neither is the underlying willfulness
determination. If there were any doubt as to the scope of
an “accounting,” basic principles of statutory construction
mandate that we adopt a narrow view of the term.
District courts may in some instances prefer to allow
piecemeal appeals, especially given the historically high
reversal rate of issues such as claim construction. And I
can’t say that I blame them for wanting it. But the way to
address this problem is by giving proper deference to the
district court’s claim construction, not to contort the
meaning of accounting and ignore the final judgment rule.
There is no sound basis upon which to twist the statute
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 7
and introduce such inefficiency into the judicial system.
Accordingly, I dissent from the majority’s holding that we
have jurisdiction over this appeal.
United States Court of Appeals
for the Federal Circuit
______________________
ROBERT BOSCH, LLC,
Plaintiff-Appellant,
v.
PYLON MANUFACTURING CORP.,
Defendant-Cross-Appellant.
______________________
2011-1363, -1364
______________________
Appeals from the United States District Court for the
District of Delaware in No. 08-CV-0542, Judge Sue L.
Robinson.
______________________
REYNA, Circuit Judge, concurring-in-part and dissent-
ing-in-part.
The rule of finality is a bedrock principle of the feder-
al judicial system. See Radio Station WOW v. Johnson,
326 U.S. 120, 123 (1945). Its function is to “prevent[] the
debilitating effect on judicial administration caused by
piecemeal appellate disposition of what is, in practical
consequence, but a single controversy.” Eisen v. Carlisle
& Jacquelin, 417 U.S. 156, 170 (1974); see also Nystrom v.
TREX Co., 339 F.3d 1347, 1350 (Fed. Cir. 2003)
(“[P]iecemeal litigation is as strictly precluded by the rule
of finality for patent cases as it is for any other case.”).
The rule of finality is so fundamental to United States
jurisprudence that it has few exceptions.
2 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
The question we address en banc pertains to 28
U.S.C. § 1292(c)(2), which grants this court jurisdiction
over appeals from judgments in patent infringement cases
that are “final except for an accounting.” We took this
case en banc to determine whether a trial on damages and
a trial on willfulness is part of such an “accounting.” Part
I of the majority opinion concludes that “an ‘accounting’ in
the context of § 1292(c)(2) includes the determination of
damages.” Majority Op. at 13. Specifically, the majority
holds that the term “accounting” encompasses a modern
damages trial “and cannot be limited to a traditional
equitable accounting of an infringer’s profits.” I agree
with that conclusion.
In Part II, however, the majority holds that
§ 1292(c)(2) confers jurisdiction on this court to entertain
appeals from patent infringement liability determinations
when willfulness issues remain undecided. With this I
cannot agree.
First, the plain language of § 1292(c)(2) does not un-
ambiguously express Congress’s intent to exclude willful-
ness from the finality rule—indeed, it makes no mention
of willfulness at all. Second, even if a case can be made
that an “accounting” includes damages because both deal
with the mechanics of compensation, an accounting bears
no relation to the willfulness inquiry, which has little to
do with damages and everything to do with liability for
infringement. Third, if § 1292(c)(2) is interpreted to allow
an appeal before a determination of willfulness is made,
Congress’s purpose of avoiding needless expense wrought
by piecemeal appeals in patent litigation will be frustrat-
ed, not achieved. For these reasons, I respectfully dissent.
I
I begin my inquiry not with the historical meaning of
“accounting,” see Majority Op. at 6, but with the language
of § 1292(c)(2). Conn. Nat’l Bank v. Germain, 503 U.S.
249, 253−54 (1992) (“[I]n interpreting a statute a court
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 3
should always turn first to one, cardinal canon before all
others . . . that a legislature says in a statute what it
means and means in a statute what it says there.”); see
also Neder v. United States, 527 U.S. 1, 20 (1999).
Here, the key language in § 1292(c)(2) is the word “ac-
counting.” The statute mentions neither damages nor
willfulness. Regarding the former, because an accounting
and damages both deal with compensation, I agree with
the majority that whether Congress intended “accounting”
to encompass damages is sufficiently ambiguous that it is
appropriate to look to the “well-known meaning” of the
term to illuminate Congress’s intent. With regard to
willfulness, however, it is plain to me that the modern
willfulness inquiry has little to do with the well-known
meaning of an accounting or with damages. I see no
ambiguity, and therefore no need to inquire further.
Conn. Nat’l Bank, 503 U.S. at 254 (“When the words of a
statute are unambiguous, [the] first canon is also the last:
judicial inquiry is complete.” (internal quotation marks
omitted)). Under the plain meaning of the statute, an
appeal may not be taken while willfulness remains unde-
cided.
II
The majority does not inquire into the plain meaning
of § 1292(c)(2). Instead, it begins its analysis at the
second step, defining the term “accounting” in terms of its
well-known meaning at common law. It identifies cases it
claims show that an accounting included the determina-
tion of willfulness, but does not look critically at the
nature of willfulness in those cases. Even assuming that
we may look beyond the plain language of the statute,
these cases do not persuade me that the common law
meaning of “accounting” encompasses the modern willful-
ness determination.
To discern the well-known meaning of “accounting,”
the majority examines eight cases in which willfulness
4 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
was mentioned in connection with an accounting. Of
these, five were reported prior to the 1927 enactment of
§ 1292(c)(2)’s predecessor statute. Each contains one or
two sentences explaining that as part of an accounting, a
special master made a finding of willfulness. None,
however, contains any significant discussion as to what
that finding entailed. Yet from these five passing refer-
ences to willfulness, the majority concludes that there was
a pre-1927 “practice of determining willfulness as part of
an accounting.” Majority Op. at 24. This conclusion
succeeds only in substituting one question for another: if
a pre-1927 accounting included a willfulness determina-
tion, what is the modern equivalent of that determination
today? The majority does not answer this question.
The remaining three cases were decided between 1927
and 1953. In Pyle National Co. v. Lewin, the Seventh
Circuit reversed a decision in which the district court
awarded treble damages prior to conducting an account-
ing, concluding that “such a determination [could be
made] only after the amount and character of the damag-
es have been stated.” 92 F.2d 628, 631 (7th Cir. 1937). In
Overman Cushion Tire Co. v. Goodyear Tire & Rubber
Co., 66 F.2d 361, 363 (2d Cir. 1933), the Second Circuit
upheld an award of enhanced damages where the district
court had found the infringer’s behavior to be “conscious
and deliberate.” And in Patterson-Ballagh Corp. v. Moss,
the Ninth Circuit relied on Pyle and Overman for the
proposition that a district court could “determine the
question of willful infringement subsequent to the report
of the [Special] Master rather than in the earlier proceed-
ings upon the issues of validity and infringement.” 201
F.2d 403, 408 (9th Cir. 1953).
In light of these cases, the majority concludes that “it
is clear that an accounting, both prior to and after Con-
gress’s grant of interlocutory jurisdiction over cases that
are final except for an accounting, included the determi-
nation of willfulness.” Majority Op. at 26. But the major-
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 5
ity does not inquire into the substance of the willfulness
inquiry in those cases that it reads into the statute. In
my view, the discussion of willfulness in these eight cases
could equally have involved the special master’s determi-
nation of the amount, if any, by which damages should be
enhanced—a question that is significantly different
from—and should not be confused with—the modern
willfulness inquiry. If by willfulness we mean the
amount, the numerical factor, e.g., treble, by which dam-
ages are enhanced, then willfulness is a damages issue
and part of an accounting. But willfulness is more than
the amount of enhancement, it is the litigation process
that determines whether a factual and legal basis exists
to support an enhancement. The factual and legal basis
necessary to support a willfulness finding makes clear
that willfulness is separate and distinct from damages,
including the amount of any enhancement.
III
Upon a judgment of liability for infringement, a pa-
tentee may recover damages adequate to compensate for
the infringement. See 35 U.S.C. § 284. Section § 284 also
provides that “the court may increase the damages up to
three times the amount found or assessed.” Although
the damages statute contains no mention of willfulness,
willfulness plays a role in the determining whether dam-
ages should be enhanced under § 284, a role that is stark-
ly different today than it was in 1927. The majority
conflates this difference.
A
The cases relied on by the majority show an under-
standing of willfulness much different than how we
understand the term today. In those cases, the willful-
ness determination appears to have involved an inquiry
into the mental state or conduct of the accused infringers.
For example, in Boesch v. Graff, the special master con-
cluded that the infringement was “willful, wanton, and
6 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
persistent”; on appeal, the infringer urged that his behav-
ior had been innocent. 133 U.S. 697, 699, 704 (1890). In
Pollock v. Martin Gauge Co., the court equated willfulness
with “reprehensible” conduct, but concluded that the issue
must be determined by the special master in the first
instance. 261 F. 201, 202 (7th Cir. 1919). In K.W. Igni-
tion Co. v. Temco Electric Motor Co., the special master
awarded punitive damages based on the “willful and
malicious conduct” of the defendants. 283 F. 873, 874 (6th
Cir. 1922). And in Reed Roller Bit Co. v. Hughes Tool Co.,
the court affirmed a finding of willfulness because the
defendant acted in spite of his knowledge that his actions
would infringe. 12 F.2d 207, 210 (5th Cir. 1926).
These cases must be viewed in light of the legal land-
scape from which they arose. Then, as now, a district
court “ha[d] power, in its discretion, to increase the dam-
ages a plaintiff suffers.” Overman, 66 F.2d at 362 (em-
phasis added). In such a case, “[t]he exercise of that
discretion [would] not be reversed on appeal if there be
justification and reason therefor. Unless it is made clear
from the facts that there was no warrant for the increased
damages, . . . an increase of damages will not be dis-
turbed.” Id. (citations omitted); see also Wallace & Tie-
man Co. v. City of Syracuse, 45 F.2d 693, 695 (2d Cir.
1930) (reviewing the decision to enhance damages for
abuse of discretion); Fox v. Knickerbocker Engraving Co.,
165 F. 442, 444−45 (2d Cir. 1908) (same). Viewed
against that backdrop, the discussion of willfulness in the
cases relied upon by the majority appears to me to be
related more to the enhancement of damages, such as
declaring that punitive damages apply, and less to the
modern willfulness inquiry.
B
The definition of willful patent infringement has
changed significantly over time. Our most recent formu-
lation of this standard originated in In re Seagate Tech-
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 7
nology, LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007) (en
banc). In Seagate, we abandoned the affirmative duty of
due care from Underwater Devices Inc. v. Morrison-
Knudsen Co., 717 F.2d 1380, 1389−90 (Fed. Cir. 1983),
and held that “proof of willful infringement permitting
enhanced damages requires at least a showing of objective
recklessness.” Seagate, 497 F.3d at 1371 (emphasis
added). Seagate established a two-prong test for estab-
lishing recklessness. First, “a patentee must show by
clear and convincing evidence that the infringer acted
despite an objectively high likelihood that its actions
constituted infringement of a valid patent.” Id. Once the
“threshold objective standard is satisfied, the patentee
must also demonstrate that this objectively-defined risk
. . . was either known or so obvious that it should have
been known to the accused infringer.” Id.The first prong of Seagate requires proof that overlaps
significantly with the question of liability for infringe-
ment. For example, this prong may involve questions of
claim construction. See Cohesive Techs., Inc. v. Waters
Corp., 543 F.3d 1351, 1374 (Fed. Cir. 2008) (affirming a
finding of no willful infringement because a term was
“susceptible to a reasonable construction under which [the
accused] products did not infringe”). It can be bound up
in the infringement determination itself. See DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1336−37 (Fed. Cir. 2009) (holding that the first
prong was not met when “the record developed in the
infringement proceeding . . . , show[ed] that the question
of equivalence was a close one,” particularly in light of the
intensely factual inquiry involved in the doctrine of
equivalents analysis). It frequently involves whether the
infringer has a reasonable defense to liability. See, e.g.,
Spine Solutions, Inc. v. Medtronic Sofamor Danek USA,
Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010) (“The ‘objective’
prong of Seagate tends not to be met where an accused
infringer relies on a reasonable defense to a charge of
8 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
infringement.”). None of these issues could reasonably be
said to be part of an accounting.
The second prong of Seagate is closer to the willful-
ness inquiry performed by special masters as part of an
accounting. This prong considers whether the objective
risk from the first prong “was either known or so obvious
that it should have been known to the accused infringer.”
497 F.3d at 1371. Ultimately, however, because the
second prong is defined by reference to the first, this part
of the willfulness inquiry cannot be viewed in isolation.
This is especially true when induced infringement is at
issue, because induced infringement is decided in part on
the accused infringer’s state of mind. And, as with the
first prong, the facts relevant to the infringer’s state of
mind have little to do with damages or with an account-
ing.
“[W]here Congress borrows terms of art in which are
accumulated the legal tradition and meaning of centuries
of practice, it presumably knows and adopts the cluster of
ideas that were attached to each borrowed word in the
body of learning from which it was taken and the mean-
ing its use will convey to the judicial mind unless other-
wise instructed.” Morissette v. United States, 342 U.S.
246, 263 (1952). The modern willfulness inquiry, as set
forth in Seagate, was not in the cluster of ideas attached
to the either “willfulness” or “accounting” when Congress
passed § 1292(c)(2) or its predecessor. The Seagate in-
quiry bears little resemblance to the duty of care that it
replaced, and even less resemblance to the special mas-
ter’s willfulness determination in the cases relied on by
the majority. I see no basis to retroactively import
Seagate into § 1292(c)(2)’s exception to the rule of finality.
C
Seagate was careful to distinguish between the de-
termination that infringement was willful and the deci-
sion of whether damages should be enhanced. Id. at 1368
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 9
(“[A] finding of willfulness does not require an award of
enhanced damages; it merely permits it.”). Seagate’s
holding carefully separates willfulness from enhance-
ment: “proof of willful infringement permitting enhanced
damages requires at least a showing of objective reckless-
ness.” Seagate, 497 F.3d at 1371. This is so because a
separate legal standard and standard of review govern
the decision to enhance damages.
For example, in deciding how much, if any, to enhance
damages, the district court must consider a variety of
factors. See Read Corp. v. Portec, Inc., 970 F.2d 816,
826−27 (Fed. Cir. 1992). In particular, this court has
identified nine factors that may be relevant to determina-
tion of whether damages should be enhanced: (1) whether
the infringer deliberately copied the ideas or design of
another; (2) whether the infringer, when he knew of the
other’s patent, investigated the patent and formed a good
faith belief that it was invalid or that it was not infringed;
(3) the infringer’s behavior in the litigation; (4) the in-
fringer’s size and financial condition; (5) the closeness of
the case; (6) the duration of the misconduct; (7) the reme-
dial action by the infringer; (8) the infringer’s motivation
for harm; and (9) whether the infringer attempted to
conceal its misconduct. Id. The district court’s applica-
tion of these factors is reviewed for abuse of discretion.
See i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 858-59
(Fed. Cir. 2010), aff’d, ____ U.S. ____, 131 S. Ct. 2238(2011).
The majority fails to recognize the distinction between
the willfulness determination and the decision to enhance
damages. In my view, the distinction is critical. Although
it is difficult to discern much about willfulness from the
cases upon which the majority relies, I find that the
references to willfulness in those cases have more in
common with the analysis under Read than with the
analysis under Seagate—the determination of willfulness
10 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
in the old cases is made in support of the decision to
enhance damages and is reviewed for abuse of discretion.
I acknowledge an overlap between the second prong of
Seagate and the Read factors. But the fact that some
overlap exists is of little importance here because ulti-
mately, neither prong of Seagate is remotely related to an
accounting of damages. For example, objective reasona-
bleness does not depend on the amount of lost profits or
the reasonable royalty. The Read factors, on the other
hand, relate almost exclusively to damages and not to
liability. Thus, while there is substantial overlap between
the operative facts and law of the liability inquiry and the
Seagate test, there is virtually no overlap between opera-
tive facts and law of the damages inquiry and the Seagate
test.
I therefore agree with the majority opinion to the ex-
tent that it can be read to hold that the term “accounting,”
as used in § 1292(c)(2), includes the district court’s deci-
sion to enhance damages. I cannot agree that an “ac-
counting” incorporates the current Seagate standard for
determining willfulness, a standard that today is far
removed from anything Congress might have intended
§ 1292(c)(2)’s predecessor to encompass in 1927.
IV
When Congress passed the predecessor to § 1292(c)(2),
it expressed its belief that the availability of a pre-
accounting interlocutory appeal was necessary to “prevent
a great burden of expense to litigants in actions to deter-
mine the validity of patents.” H.R. Rep. No. 1890, 69th
Cong., 2d Sess. 1 (1927). The majority believes that this
statement of Congressional intent further supports its
conclusion that interlocutory appeals should be available
prior to a trial on damages, especially “[g]iven the sub-
stantial reversal rate of liability determinations on ap-
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 11
peal.” 1 Majority Op. at 20. In the context of willfulness,
however, the Congressional intent points to an opposite
conclusion. Allowing appeals prior to a determination on
willfulness will force litigants to try and appeal virtually
identical sets of facts and issues twice.
At trial, willful infringement is not treated as an “ac-
counting.” To the contrary, juries are asked to decide
whether the infringing conduct was carried out in the face
of known risks. To prove infringement, a patentee must
show the infringer made, used, or sold a product satisfy-
ing each element of the asserted claims. To prove that
infringement was willful, a patentee must further show
that the party in possession of the accused product en-
gaged in that conduct despite its awareness of a looming
risk of infringement. As it plays out in the context of a
trial, before there is any consideration of compensation, a
fact finder typically answers a “yes” or “no” as to whether
the patentee has carried its burden in proving liability for
infringement. The same “yes” or “no” question is posed
for charges of willful infringement. In my view, it is not a
coincidence that on the jury verdict form, the question for
willfulness typically follows immediately after the jury
instruction on liability.
The majority expounds its opinion upon theory
whereas the reality of practice in the courtroom is in
opposite. In presenting the factual elements of willful-
ness, the parties build a case that is bundled with proof of
1 This statement, I find interesting, especially in
view that our high reversal rates are purported to be with
respect to claim construction and not liability. Borrowing
the majority’s reasoning, high reversal rates on liability
would support my view that willfulness, as a component
of liability, should not be left undecided. Of course, I do
not believe that rates of reversal should be a basis for
fashioning exceptions to the finality rule.
12 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
infringement. Often, this will include documents from the
same technical custodians, testimony from the same
witnesses, and attorney arguments that tie the frame-
work set forth in Seagate to the actual people, products,
and decisions that compel the presence or absence of
willful infringement. The Seagate determination is inex-
tricably intertwined with liability for infringement—they
are two sides of the same coin. The damages issue, on the
other hand, is a coin of an entirely different cast.
While the willful infringement inquiry is bound up
with conduct, the damages inquiry is bound up with
compensation. Willful infringement exists, or not, regard-
less of monetary consequences. Its only relation to dam-
ages is as a prerequisite to their enhancement. A
patentee can prove its case for willful infringement with-
out any mention of damages; it can prove its damages
case without mention of liability or willfulness. If it
succeeds in proving the former, the latter may be en-
hanced. This is a critical point of distinction between our
modern willfulness framework and the historical “ac-
counting” that is illuminated by the majority where
willfulness and enhancement were not carefully separat-
ed.
Whether to enhance damages is a post-trial assess-
ment reserved to the discretion of the court. It involves a
two-step process. 2 Before a patentee can sit atop the
2 It is well-established that the decision whether to
grant enhanced damages as allowed under 35 U.S.C. §
284 requires a two-step process. Jurgens v. CBK, Ltd., 80
F.3d 1566, 1570 (Fed. Cir. 1996). “First, the fact-finder
must determine whether an infringer is guilty of conduct
upon which increased damages may be based. If so, the
court then determines, exercising its sound discretion,
whether, and to what extent, to increase the damages
award given the totality of the circumstances.” Id.ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 13
summit and request a court to award enhanced damages,
it must first climb the mountain by showing the objective-
ly-defined risk and how the infringer disregarded that
risk. Today, the willfulness inquiry is tied to the liability
inquiry in that both must be tried and proved as thresh-
old matters and in complete isolation from any considera-
tion regarding compensation. 3
To allow appeal of liability prior to infringement is to
litigate—and probably to appeal—what are essentially
the same facts and the same law twice. I cannot extend
§ 1292(c)(2)’s limited exception to the rule of finality this
far. Under the majority’s holding, § 1292(c)(2) will no
longer achieve Congress’s goal of avoiding unnecessary
expense—it will ensure that infringement trials are
further delayed and needlessly expensive.
* * *
For the foregoing reasons, I would hold that interlocu-
tory appeal is available prior to a determination on the
enhancement of damages but is not available prior to the
determination of willfulness. The majority having con-
cluded otherwise, I respectfully dissent.
3 Of course, district courts maintain their discretion
to bifurcate the liability and willfulness portions of a trial
when concerns regarding prejudicial evidence or other
compelling factors arise and I have complete trust in a
district court’s ability to do so. It is up to the individual
district courts to fashion a trial plan that best accommo-
dates the court, the parties, and the facts of any particu-
lar case.
United States Court of Appeals
for the Federal Circuit
______________________
ROBERT BOSCH, LLC,
Plaintiff-Appellant,
v.
PYLON MANUFACTURING CORP.,
Defendant-Cross-Appellant.
______________________
2011-1363, -1364
______________________
Appeals from the United States District Court for the
District of Delaware in No. 08-CV-0542, Judge Sue L.
Robinson.
______________________
O’MALLEY, Circuit Judge, dissenting, with whom
WALLACH, Circuit Judge, joins.
There is no doubt that § 1292(c)(2) is an exception to
the final judgment rule that applies only to patent cases
and, thus, expands the normal appellate jurisdiction of
this, and only this, court of appeals. On this point, I agree
with the majority. The question we address is whether
the scope of that exception has the astounding breadth
the majority affords it today. I do not believe that it does.
Indeed, I believe the majority stretches that statutory
provision beyond reasonable bounds, and well beyond
anything Congress intended.
2 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
Congress created this court pursuant to its authority
under Article III of the United States Constitution.
Federal Courts Improvement Act of 1982, Pub. L. No. 97-
164, 96 Stat. 25. As such, the scope of our jurisdiction is
defined by Congress, as are the rules and procedures we
are to follow. See Christianson v. Colt Indus. Operating
Corp., 486 U.S. 800, 818 (1988) (“‘Courts created by
statute can have no jurisdiction but such as the statute
confers.’” (quoting Sheldon v. Sill, 49 U.S. (8 How.) 441,
449 (1850))). We may not expand that jurisdiction or
differentiate ourselves from other Article III courts based
on the subject matter of the cases before us, our own
policy views of how best to resolve cases in those subject
matter areas, or even the understandable docket-driven
concerns of the tribunals from which our appeals arise.
The Supreme Court repeatedly has reminded us that the
unique nature of our subject matter jurisdiction does not
justify our adoption of unique rules—whether procedural
or substantive. See, e.g., Gunn v. Minton, 133 S. Ct. 1059,
1064, 1068 (2013) (applying general principles of “arising
under” and disagreeing with our jurisprudence holding
that a state law malpractice claim involving patent dis-
putes arises under federal patent law); MedImmune, Inc.
v. Genentech, Inc., 549 U.S. 118, 122, 131, 132 n.11 (2007)
(overturning a decision by this court pertaining to a
declaratory judgment action by a patent licensee because
the legal standards employed conflicted with general
declaratory judgment jurisprudence); eBay Inc. v. Mer-
cExchange, L.L.C., 547 U.S. 388, 393-94 (2006) (rejecting
this court’s attempt to develop a rule regarding the right
to injunctive relief “unique to patent disputes,” holding
that “the traditional four-factor framework . . . governs
the award of injunctive relief”).
Despite these reminders, the majority today once
again concludes that matters before this court may be
treated differently than civil litigation before every other
court of appeals in the federal system. The majority
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 3
claims that this time, it is authorized to endorse unique
procedures for patent litigation coming from district
courts—procedures that differ markedly from those
employed in our sister circuits—because there is a statu-
tory provision that expressly authorizes it to do so: 28
U.S.C. § 1292(c)(2). I disagree.
I dissent from both of the majority’s conclusions. I do
not believe we are authorized to hear interlocutory ap-
peals of liability judgments where a request for a jury
trial on damages remains outstanding or a request for a
finding of willful infringement has not yet been ad-
dressed. I believe this appeal should be dismissed be-
cause it is a non-final judgment over which we have no
jurisdiction. I would remand the matter to the trial court
pending further proceedings and entry of a final judg-
ment.
I.
The final judgment rule imposes an important limita-
tion on jurisdiction of all Article III courts of appeal.
Under 28 U.S.C. § 1295(a)(1), except in very limited
circumstances, this court has jurisdiction only over ap-
peals “from a final decision of the district courts . . . in
any civil action arising under . . . any Act of Congress
relating to patents.” (emphasis added). The Supreme
Court has characterized a final decision as one that “ends
the litigation on the merits and leaves nothing for the
court to do but execute the judgment.” Van Cauwen-
berghe v. Biard, 486 U.S. 517, 522 (1988) (quoting Catlin
v. United States, 324 U.S. 229, 233 (1945)). In Firestone
Tire & Rubber Co. v. Risjord, 449 U.S. 368 (1981), the
Supreme Court explained that the “rule[] that a party
must ordinarily raise all claims of error in a single appeal
following final judgment on the merits[] serves a number
of important purposes.” 449 U.S. at 374. According to the
Court:
4 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
[The final judgment rule] emphasizes the defer-
ence that appellate courts owe to the trial judge as
the individual initially called upon to decide the
many questions of law and fact that occur in the
course of a trial. Permitting piecemeal appeals
would undermine the independence of the district
judge, as well as the special role that individual
plays in our judicial system. In addition, the rule
is in accordance with the sensible policy of
avoid[ing] the obstruction to just claims that
would come from permitting the harassment and
cost of a succession of separate appeals from the
various rulings to which a litigation may give rise,
from its initiation to entry of judgment. The rule
also serves the important purpose of promoting ef-
ficient judicial administration.
Id. (second alteration in original) (citations and internal
quotation marks omitted). Thus, “[t]he finality require-
ment . . . embodies a strong congressional policy against
piecemeal reviews, and against obstructing or impeding
an ongoing judicial proceeding by interlocutory appeals.”
United States v. Nixon, 418 U.S. 683, 690 (1974).
In all other circuits and all other types of cases, the
finality requirement plainly applies to outstanding dam-
ages determinations. See, e.g., F.H. Krear & Co. v. Nine-
teen Named Trustees, 776 F.2d 1563, 1564 (2d Cir. 1985)
(per curiam) (“We have held that where attorneys’ fees
are a contractually stipulated element of damages, a
judgment is not final until the fees have been deter-
mined.”); Carolina Power & Light Co. v. Dynegy Mktg. &
Trade, 415 F.3d 354, 358 (4th Cir. 2005) (“[A] judgment
on liability that does not fix damages is not a final judg-
ment because the assessment of damages is part of the
merits of the claim that must be determined.”); Deloach v.
Delchamps, 897 F.2d 815, 826 (5th Cir. 1990) (stating that
“a judgment is not final until both liability and damages
are determined”); Maristuen v. Nat’l States Ins. Co., 57
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 5
F.3d 673, 678 (8th Cir. 1995) (“A judgment awarding
damages but not deciding the amount of the damages or
finding liability but not fixing the extent of the liability is
not a final decision within the meaning of § 1291.”);
Rekstad v. First Bank Sys., 238 F.3d 1259, 1262 (10th Cir.
2001) (noting “the well-accepted rule that an order deter-
mining liability but leaving damages to be calculated is
not final unless the correct amount of damages is self-
evident and not likely to be the subject of future appeal”).
After a jury trial on the liability issues presented in
this patent case, and attendant motion practice, the trial
court entered judgment on those liability issues. Recog-
nizing that its judgment was not final within the meaning
of § 1295(a)(1) and a traditional understanding of the
finality requirement, the trial court entered judgment
pursuant to Federal Rule of Civil Procedure 54(b) and
encouraged the parties to pursue an interlocutory appeal
on the basis of that certification. 1
Correctly contending that Rule 54(b) does not permit
certification of judgments which fail to resolve all issues
1 Under Rule 54(b), “[w]hen an action presents
more than one claim for relief—whether as a claim,
counterclaim, crossclaim, or third-party claim—or when
multiple parties are involved, the court may direct entry
of final judgment as to one or more, but fewer than all,
claims or parties only if the court expressly determines
that there is no just reason for delay.” Although it applies
to multiple claims in a single action, Rule 54(b) itself
provides no exemption from the rule that each of those
claims be finally decided under 28 U.S.C. § 1295. See,
e.g., Henrietta D. v. Giuliani, 246 F.3d 176, 181 n.1 (2d
Cir. 2001) (“[W]here a district court is considering further
relief on a claim, ‘final judgment’ on the claim ordinarily
may not be entered under Rule 54(b).” (citing Liberty Mut.
Ins. Co. v. Wetzel, 424 U.S. 737, 742-43 (1976))).
6 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
with respect to a claim or party, Bosch moved to dismiss
its own appeal and Pylon’s cross appeal. Robert Bosch
LLC v. Pylon Mfg. Corp., Nos. 2011-1363, -1364, Dkt. No.
24 (June 24, 2011). In denying that motion, the motions
panel did not rely on Rule 54(b). 2 Robert Bosch LLC v.
Pylon Mfg. Corp., 426 F. App’x 912, 913 (Fed. Cir. 2011)
(citing 28 U.S.C. § 1292(c)(2) as the basis for denying
Bosch’s motion to dismiss). Instead, in denying Bosch’s
motion to reconsider this court’s denial of Bosch’s motion
to dismiss, we cited to our 1988 decision in In re Calmar,
Inc., 854 F.2d 461, 464 (Fed. Cir. 1988), for the proposi-
tion that 28 U.S.C. § 1292(c)(2) is a broad exception to the
finality rule, allowing for interlocutory appeals in patent
cases even where “a jury trial . . . on the issues of damag-
es and willfulness” remains pending. Robert Bosch LLC
v. Pylon Mfg. Corp., 437 F. App’x 947, 948 (Fed. Cir.
2011).
Bosch continued to dispute our jurisdiction over this
appeal despite the motions panel’s ruling, arguing to the
merits panel that § 1292(c)(2) does not apply to jury trials
on damages or willfulness determinations; Bosch contends
2 There is no dispute that a Rule 54(b) certification
is not appropriate in the circumstances presented here.
See Robert Bosch LLC v. Pylon Mfg. Corp., Nos. 2011-
1363, -1364, Dkt. No. 25 (July 8, 2011) (conceding that the
jurisdictional issue turns on § 1292(c)(2)); see also Cadle-
way Props. v. Ossian State Bank, 478 F.3d 767, 769 (7th
Cir. 2007) (“[T]he district judge has not specified who is
entitled to what relief. . . . [A] decision that resolves a
dispute about liability while leaving relief to be deter-
mined cannot be appealed under Rule 54(b).”); Reyher v.
Champion Int’l Corp., 975 F.2d 483, 487 (8th Cir. 1992)
(“[W]hen the issues of liability and remedy were bifurcat-
ed for trial, Rule 54(b) did not provide a basis for an
interlocutory appeal of the order entered after the first
trial.”).
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 7
that § 1292(c)(2) does not operate as the broad exception
to the finality rule which either Calmar or the motions
panel described. Because we have an obligation to assess
our jurisdiction at all stages of proceedings before us, we
agreed to consider the scope and import of § 1292(c)(2) en
banc.
II.
Section 1292(c)(2) grants this court jurisdiction over
“an appeal from a judgment in a civil action for patent
infringement which . . . is final except for an accounting.”
As an exception to the final judgment rule, § 1292(c)(2) is
to be interpreted narrowly. See Digital Equip. Corp. v.
Desktop Direct, Inc., 511 U.S. 863, 867-68 (1994) (stress-
ing the importance of the final judgment rule and express-
ing concern when a narrow exception threatened to
“swallow the general rule”); Coopers & Lybrand v. Live-
say, 437 U.S. 463, 474 (1978) (stating that “Congress
carefully confined” the availability of immediate review of
non-final orders); Cobbledick v. United States, 309 U.S.
323, 324-25 (1940) (“Finality as a condition of review . . .
was written into the first Judiciary Act and has been
departed from only when observance of it would practical-
ly defeat the right to any review at all.” (footnotes omit-
ted)). 3 Rather than interpreting § 1292(c)(2) narrowly,
3 See also Albert v. Trans Union Corp., 346 F.3d
734, 737 (7th Cir. 2003) (statutory exceptions to final
judgment rule are to be narrowly construed); Switzerland
Cheese Ass’n v. E. Horne’s Mkt., Inc., 351 F.2d 552, 553
(1st Cir. 1965) (statutes permitting interlocutory appeals
are to be strictly construed); Florida v. United States, 285
F.2d 596, 600 (8th Cir. 1960) (“statutes authorizing inter-
locutory appeals are to be strictly construed,” and
“[c]hanges in appeal jurisdiction should be made by
appropriate legislation, not by judicial modification”). But
see 28 U.S.C. § 1292(e) authorizing the Supreme Court,
8 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
however, the majority grossly expands this court’s juris-
dictional reach by adopting a broad definition of what
constitutes an “accounting” under that rule. Because I
believe the term “accounting” only applies to a limited
class of proceedings before special masters or to those
instances in which the trier of fact has decided all matters
relevant to a damages determination save the application
of those decisions to an undisputed set of numbers, I do
not believe § 1292(c)(2) justifies the exercise of jurisdiction
over this appeal.
As the majority concedes, our statutory analysis must
begin “with ‘the assumption that the ordinary meaning of
the language’ chosen by Congress ‘accurately expresses
the legislative purpose.’” Microsoft Corp. v. i4i Ltd. P’ship,
131 S. Ct. 2238, 2245 (2011) (quoting Engine Mfrs. Ass’n
v. S. Coast Air Quality Mgmt. Dist., 541 U.S. 246, 252
(2004)). When Congress “uses a common-law term in a
statute, we assume the term . . . comes with a common
law meaning, absent anything pointing another way.” Id.(citations omitted). In discerning the boundaries of such a
term, we must look to what was meant by the term at the
time the statute was drafted. See, e.g., Neder v. United
States, 527 U.S. 1, 21 (1999) (“It is a well-established rule
of construction that where Congress uses terms that have
accumulated settled meaning under . . . the common law,
a court must infer, unless the statute otherwise dictates,
that Congress means to incorporate the established
meaning of these terms.”) (citations omitted); Standard
Oil Co. v. United States, 221 U.S. 1, 59 (1911) (“[W]here
words are employed in a statute which had at the time a
well-known meaning at common law or in the law of this
country they are presumed to have been used in that
sense unless the context compels to the contrary.”) (cita-
tions omitted). Thus, what was meant by reference to an
but only the Supreme Court, to expand interlocutory
jurisdiction of courts of appeals by rule.
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 9
“accounting” at the time the exception codified in
§ 1292(c)(2) was originally enacted is critical to our in-
quiry.
The majority begins this inquiry by asking and an-
swering the wrong question—whether an “accounting” as
of 1927 only permitted consideration of an infringer’s
profits or also allowed calculation of a patentee’s damag-
es. While the majority’s discussion of this point is thor-
ough and erudite, it is irrelevant. What we should ask is
not what questions may be considered during the course
of an “accounting” but whether the procedure that was an
“accounting” as of 1927—the one contemplated in
§ 1292(c)(2)—is the same as or encompasses a jury trial
on any of those same questions. 4
Turning then to what is really at issue here—whether
the “accounting” Congress contemplated in § 1292(c)(2) is
the same thing as a jury trial on damages—the majority
cites “four points” in support of the conclusion that it is:
(1) the fact that in 1948, Congress changed the predeces-
sor to § 1292(c)(2) so as to allow for appellate jurisdiction
in “civil actions” without deleting the reference to an
“accounting”; (2) the majority’s belief that juries assessing
damages must resolve “the same issues” special masters
historically decided in accountings; (3) the majority’s
belief that allowing appeal of judgments that are final
except for a jury trial on damages promotes the same
policies that prompted Congress to allow interlocutory
appeal of judgments final except for an accounting in
equity proceedings; and (4) a general reliance on stare
4 Admittedly, Bosch invited the court to go down
this rabbit hole by arguing that “accountings” never
included a calculation of anything other than an infring-
er’s profits, as distinct from an assessment of damages; it
remains an essentially irrelevant inquiry nonetheless.
10 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
decisis. See Maj. Op. at 13-14. I find none of those points
persuasive.
III.
I analyze the majority’s justifications for expanding
the jurisdictional scope of § 1292(c)(2) in the order in
which it reaches them.
A.
The majority’s only attempt at a statutory analysis to
support its holding is its claim that, by substituting the
phrase “civil actions” for “suit[s] in equity” in the jurisdic-
tional grant of § 1292, Congress somehow intended to
expand the concept of an accounting to include jury trials
on damages. The disregard for the importance of the
right to a jury trial and misunderstanding of what a jury
trial entails which is evident in this proposition is stun-
ning.
As the majority concedes, in 1927, “Congress gave the
term ‘accounting’ its judicially settled meaning (i.e.,
proceedings before a special master to determine the
infringer’s profits and the plaintiff’s damages) when it
enacted § 227a,” the predecessor to § 1292(c)(2). Maj. Op.
at 11. Section 227a expressly pertained only to “suit[s] in
equity”—proceedings in which a jury trial on damages
was unavailable. And, the accounting employed in those
proceedings was one in which post-trial the exercise of
applying the trial court’s findings to the sales of infringing
products for purposes of calculating an award to the
patent holder occurred. At no point after 1927 did Con-
gress expressly expand the definition of accounting to
include anything other than this original construct.
So how does a word with an admitted original mean-
ing and scope morph from one thing into another? How
does an equitable proceeding that contemplates a crunch-
ing of numbers post-trial now encompass the very differ-
ent process of a jury trial on damages? The majority says
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 11
that Congress dramatically revamped the concept of an
accounting without ever actually saying so. Specifically,
the majority concludes that, when Congress revised 28
U.S.C. § 1292 in 1948 to give courts of appeals jurisdiction
over judgments in “civil actions for patent infringement
which are final except for accounting,” Congress really
meant to say that they were doing away with the concept
of “accountings” contemplated in the 1927 Act and rede-
fining the old word “accounting” to mean any procedure,
including jury trials, in which any decision-maker either
awarded or assessed any measure of damages in patent
cases. I cannot take that leap of logic with my colleagues.
In 1927, a court hearing a case under the patent laws
“according to the course and principles of courts of equity”
was permitted, upon a finding of infringement, to allow
the complainant to recover “in addition to the profits to be
accounted for by the defendant, the damages the com-
plainant has sustained thereby.” Patent Act of 1922, Pub.
L. No. 67-147, ch. 58, § 8, 42 Stat. 389, 392; Patent Act of
1870, ch. 280, § 55, 16 Stat. 198, 206. Thus, in any bill of
equity seeking relief from an infringer, a plaintiff was
entitled to have a special master perform an accounting to
calculate an infringer’s profits or a patentee’s own lost
sales, to the extent provable. In 1946, 35 U.S.C § 70 was
amended to allow a patent holder to recover “general
damages which shall be due compensation for making,
using, or selling the invention, not less than a reasonable
royalty therefore, together with such costs, and interest,
as may be fixed by the court.” 60 Stat. 778 (1946); see also
35 U.S.C. § 284 (2006). The Supreme Court has explained
that the purpose of this statutory change largely was to
eliminate the recovery of an infringer’s “profits” in most
patent actions and to allow only for damages tied directly
to the infringement. Aro Mfg. Co. v. Convertible Top
Replacement Co., 377 U.S. 476, 505-06 (1964). The legis-
lative history of the 1946 amendments suggests that the
purpose of this change was to reduce the cost of ac-
12 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
countings before special masters in courts of equity by
eliminating the most complex aspects of the task special
masters were asked to undertake post-trial. The Commit-
tee on Patents of the House of Representatives noted:
Frequently a suit for patent infringement involves
the infringement of only an improvement in a
complex machine, and it is impossible to apportion
profits due to the improvement. In such circum-
stances the proceedings before masters, which are
conducted in accordance with highly technical
rules and are always expensive, are often pro-
tracted for decades and in many cases result in a
complete failure of justice.
Although the bill would not preclude recovery of
profits as an element of general damages, . . . by
making it unnecessary to have proceedings before
masters and empowering equity courts to assess
general damages irrespective of profits, the meas-
ure represents proposed legislation which in the
judgment of the committee is long overdue.
H.R. Rep. No. 1587, 79th Cong., 2d Sess. 1 (Feb. 19, 1946);
see also 92 Cong. Rec. 9188 (1946) (statement of Sen.
Pepper) (“Experience has proven that it is such a difficult
accounting matter to determine what the profit of the
alleged infringer has been that there is almost always an
interminable delay in connection with the recovery
sought. Consequently, the basis laid down by this bill is
general compensatory damages which the plaintiff in suit
sustains.”). Despite these changes in the remedies avail-
able for patent infringement, there is no indication that
the meaning of the term “accounting” ever changed.
Congress only was addressing those remedies which could
be calculated post-trial in an equitable proceeding. It was
not describing or redefining the nature of that proceeding.
In 1948, § 227a was recodified at 28 U.S.C.
§ 1292(a)(4) to reflect the 1938 merger of law and equity
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 13
and the 1946 revision to the patent damages statute. In
relevant part, the phrase “suit[s] in equity” was replaced
with the phrase “civil actions.” H.R. Rep. 308, 80th Cong.,
1st Sess., A111 (1948) (“In subsection (3), which is based
on section 227a of title 28, U.S.C., 1940 ed., words ‘civil
actions’ were substituted for ‘suits in equity’ . . . .”). The
majority makes much of this substitution; in fact, it is the
only reed upon which the majority attempts to support its
statutory analysis. While the reference to “civil actions”
in 1948 was necessary to make clear that appellate juris-
diction over patent actions was broad enough to cover
actions which combined legal and equitable claims, there
is nothing in the Act or its legislative history which indi-
cates that the word “accounting” took on an entirely new
meaning. As the majority acknowledges, “accountings”—
as the term was used in 1927 (i.e., proceedings before a
special master that could include the determination of
damages)—continued to be available in civil actions
following the merger of law and equity and continue to be
available in limited circumstances today. Maj. Op. at 17
n.2. If the word “accounting” was really redefined in
1948, it means that the term both had to retain its origi-
nal meaning and take on procedures that were not em-
ployed in patent cases in 1927.
Rather than alter the concept of an accounting to in-
clude a jury trial on damages, the merger of law and
equity simply permitted both types of relief to be sought
in a single action, while maintaining the essential charac-
ter of each. See Kennedy v. Lasko Co., 414 F.2d 1249,
1251-52 (3d Cir. 1969) (merger of actions into a single
action under Rule 2 of the Federal Rules of Civil Proce-
dure did not obliterate the distinction between them—
actions at law can remain triable to a jury; actions in
equity are not). The 1948 amendments to § 1292, rightly
understood, simply clarified that the actions merged by
the Federal Rules in 1938 were collectively appealable
when final. In context, the continuing reference to an
14 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
accounting in § 1292(c)(2) is simply a continuing recogni-
tion that actions in equity for infringement continued to
the extent a patentee either chose to forgo a right to
damages at law or the remedy at law was inadequate.
See AMF Tuboscope, Inc. v. Cunningham, 352 F.2d 150,
153 (10th Cir. 1965) (equitable and legal actions combined
in single action, but equitable damage remedy must give
way to legal one except where legal remedy is wholly
inadequate).
In equating an accounting before a special master
with a jury trial on damages—and concluding Congress
did so as well—the majority not only mischaracterizes the
import of the 1948 amendment to § 1292, it also ignores
the distinction between juries and special masters as
decision-makers, and ignores the distinctions between
what each has the authority to decide. Indeed, the propo-
sition that a jury trial on damages is different from an
accounting should be uncontroversial.
The Supreme Court has rejected soundly the conten-
tion that an accounting by a special master is a mere
substitute for a jury trial on damages. See Dairy Queen,
Inc. v. Wood, 369 U.S. 469 (1962). Rule 38 of the Federal
Rules of Civil Procedure provides, in pertinent part, that
“[t]he right of trial by jury as declared by the Seventh
Amendment to the Constitution—or as provided by a
federal statute—is preserved to the parties inviolate.” In
Dairy Queen, a defendant charged with breach of contract
and trademark infringement demanded a jury trial on
liability and damages. Relying in part on the fact that the
plaintiff’s complaint also sought “an accounting of profits
illegally obtained by the defendant,” the district court
struck the defendant’s demand for a trial by jury.
McCullough v. Dairy Queen, Inc., 194 F. Supp. 686, 687
(E.D. Pa. 1961). The Third Circuit denied the defendant’s
petition for mandamus to compel the district judge to
vacate the order striking the demand for a jury trial, and
the Supreme Court granted certiorari. Dairy Queen, 369
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 15
U.S. at 470. In reversing both the Third Circuit and the
district court, the Supreme Court discounted the im-
portance of the use of the word “accounting” in the plain-
tiff’s prayer for relief, stating that “the constitutional
right to trial by jury cannot be made to depend upon the
choice of words used in the pleadings.” Id. at 477-78.
According to the Court, to maintain a suit for an equitable
accounting, “the plaintiff must be able to show that the
‘accounts between the parties’ are of such a ‘complicated
nature’ that only a court of equity can satisfactorily
unravel them.” Id. at 478. The Court then held that, “[i]n
view of the powers given to District Courts by Federal
Rule of Civil Procedure 53(b) to appoint masters to assist
the jury in those exceptional cases where the legal issues
are too complicated for the jury adequately to handle
alone, the burden of such a showing is considerably in-
creased and it will indeed be a rare case in which it can be
met.” Id. Finding that a jury “could readily determine
the recovery, if any,” the Court concluded that the district
court erred in refusing to grant the defendant’s demand
for a trial by jury. Id. at 479.
Following the Supreme Court’s guidance in Dairy
Queen, in 2009 the Tenth Circuit reversed a district
court’s decision to appoint a special master to perform an
accounting where the plaintiff requested a trial by jury on
damages. Haynes Trane Serv. Agency v. Am. Std., Inc.,
573 F.3d 947, 964 (10th Cir. 2009). While the court in
Haynes recognized that a narrow exception to the general
entitlement to have a jury assess damages exists where
there is no adequate remedy at law, it concluded the
exception only applies in the rare situation where compu-
tational complexities mandate that a jury cannot ade-
quately perform the task. Id. at 964-65. Because it found
no support for “the view that a prolonged trial in itself
provides an inadequate remedy at law,” and that “the
damages issue cannot be separated from the merits of the
liability claim,” the court remanded for a new trial on the
16 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
entire action. Id. at 965-67; see also AMF Tuboscope, 352
F.2d at 153; Thermo-Stitch, Inc. v. Chemi-Cord Processing
Corp., 294 F.2d 486, 491 (5th Cir. 1961) (“It would make
no difference if the equitable cause clearly outweighed the
legal cause so that the basic issue of the case taken as a
whole is equitable. As long as any legal cause is involved
the jury rights it creates control.”).
If a district court violates the Seventh Amendment by
ordering an accounting in the place of a jury trial on
damages, how can a jury trial on damages literally be an
“accounting” within the meaning of § 1292(c)(2)? 5
In equating an accounting with a jury trial on damag-
es, the majority also disregards the determinations which
juries as fact-finders make in the context of a damages
assessment. In damages trials, juries determine the
entitlement to damages, the nature of the damages recov-
erable (lost profits, reasonable royalty, convoyed sales,
etc.), and the formula to be employed in determining the
measure of those damages (the percentage of profits that
5 The majority is correct that we did not take this
matter en banc to consider the constitutional implications
of blanket bifurcation orders requiring damages to be
tried to a different jury than the one that considered the
liability issues in the case. That fact does not mean we
can ignore those issues, however, when interpreting the
jurisdictional reach of § 1292(c)(2). See Gasoline Prods.
Co. v. Champlin Ref. Co., 283 U.S. 494, 500 (1931) (find-
ing that a partial retrial of damages violated the Seventh
Amendment where “the question of damages . . . is so
interwoven with that of liability that the former cannot be
submitted to the jury independently of the latter without
confusion and uncertainty, which would amount to a
denial of a fair trial”). We should not assume Congress
ignored the possible Seventh Amendment implications of
its actions when it revised § 1292(c) in 1948.
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 17
represents a reasonable royalty; whether that percentage
should be applied against the entire market value of the
infringing product or some incremental portion thereof,
etc.). To aid them in assessing the right to and appropri-
ate measure of damages, we instruct the jury to consider a
broad range of factors. Georgia-Pacific Corp. v. United
States Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y.
1970) (listing relevant considerations including “[t]he
established profitability of the product made under the
patent; its commercial success; and its current populari-
ty”; “[t]he utility and advantages of the patent property
over the old modes or devices, if any, that had been used
for working out similar results”; and “[t]he amount that a
licensor (such as the patentee) and a licensee (such as the
infringer) would have agreed upon (at the time the in-
fringement began) if both had been reasonably and volun-
tarily trying to reach an agreement”). None of these
decisions was made by special masters in suits in equity.
In suits in equity, a special master’s services were on-
ly invoked once the court determined that a patentee was
entitled to a monetary remedy. Initially, the award only
took the form of an infringer’s profits on infringing sales—
which then were calculated without consideration of
apportionment. See, e.g., Livingston v. Woodworth, 56
U.S. (15 How.) 546 (1853) (holding that damages cannot
be awarded in an equity proceeding and any award was
limited to an infringer’s profits). Later, when damages
became a permissible consideration, the court would
either instruct the special master which calculation to
employ (profits or damages or some combination), and
what formula to employ, including what percentage of
sales would represent a reasonable royalty, or would
consider recommendations from special masters as to
those matters. Boesch v. Graff, 133 U.S. 697, 699 (1890)
(“Exceptions were filed to [the special master’s] report
[including damages of $2,970.50], and overruled, and a
final decree entered in favor of Graff and Donnell . . . from
18 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
which decree this appeal has been prosecuted.” (emphasis
added)); K.W. Ignition Co. v. Temco Electric Motor Co.,
283 F. 873, 874 (6th Cir. 1922) (stating that the special
master recommended an award damages, a portion of
which the district court overruled). At no point was the
special master given the authority to make those final
determinations, or to decide a patentee’s entitlement to
any particular remedy. The right to have the court, the
only trier of fact available then, make those determina-
tions remained inviolate.
The fact that the jury was given the right to make
these decisions in civil actions indicates that Congress
equated juries with the court of equity, not with a special
master whose only authority was to apply the findings
given to him to a set of data. Thus, the fact that Congress
failed to redefine the term accounting in 1948 is meaning-
ful, but it is not meaningful in the way the majority
believes. Rather than broaden the importance of an
accounting in patent cases, Congress narrowed the cir-
cumstances in which § 1292(c) would justify disregard of
the finality requirement to that narrow class of cases in
which an equitable accounting might still be necessary—
cases which the Supreme Court explained are both “ex-
ceptional” and “rare.” Dairy Queen, 369 U.S. at 478 (“In
view of the powers given to District Courts by Federal
Rule of Civil Procedure 53(b) to appoint masters to assist
the jury in those exceptional cases where the legal issues
are too complicated for the jury adequately to handle
alone, the burden of such a showing is considerably in-
creased and it will indeed be a rare case in which it can be
met.”). I just cannot understand the majority’s conclusion
to the contrary. 6
6 The majority’s discussion of Dairy Queen is con-
founding. It begins with a mischaracterization of this
opinion, ends with a mischaracterization of Wright and
Miller’s description of Dairy Queen, and sandwiches an
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 19
B.
The majority’s next point in support of its ruling is its
claim that, because the special master and the jury decide
the “same issues” when serving their respective functions,
a modern damages trial rightly should be considered an
accounting for purposes of § 1292(c)(2). Maj. Op. at 19. I
have already explained why I believe the majority’s
fundamental premise is wrong—a special master is simp-
incorrect reading of Dairy Queen in between. While who
the decision maker is in an accounting is relevant to the
inquiry, the relevant inquiry is one that asks whether the
procedure that is an accounting is the same as the proce-
dure that is a jury trial on damages. The Supreme Court
not only did not equate the two in Dairy Queen, it empha-
sized the difference between the two; it simply found the
right to the latter to be too important to be lost by sloppy
references to the former. What it said is “[t]he respond-
ents’ contention that this money claim is ‘purely equita-
ble’ is based primarily upon the fact that their complaint
is cast in terms of an ‘accounting,’ rather than in terms of
an action for ‘debt’ or ‘damages.’ But the constitutional
right to trial by jury cannot be made to depend upon the
choice of words used in the pleadings.” Dairy Queen, 369
U.S. at 477-78. Consistent with this reading of Dairy
Queen, Wright and Miller note “[l]abeling the claim as one
for an accounting also does not defeat the right to a jury.”
9 Charles Alan Wright & Arthur R. Miller, 9 Federal
Practice and Procedure: Civil § 2312, at 165 (3d ed. 2008).
If either the Supreme Court or Wright and Miller be-
lieved—as does the majority—that the procedure that is
an accounting is the same as the procedure that is a jury
trial, one would think they would have said so, thereby
avoiding any need to be concerned with “labeling” or word
“choices” in pleadings. Rather than support the majority’s
strained reading of the term accounting, the authorities to
which it cites suggest the contrary.
20 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
ly not in the same class of decision-maker as a jury and
does not decide the same issues a jury is authorized to
decide. And, I have explained why I believe the majority’s
point is irrelevant in any event because the inquiry we
undertake should not be what questions a special master
might be entitled to ask in an accounting, but what an
accounting—the procedure itself—actually is.
On the latter point, it is notable that the majority
does not contend, nor could it, that any common under-
standing of the term “accounting” would ever justify the
broad meaning it believes Congress ascribed to it. See
The Oxford English Dictionary 87 (2d ed. 1989) (defining
“accounting” as “[t]he action or process of reckoning,
counting, or computing; numeration, computation, calcu-
lation”). This common understanding aligns directly with
that used in the Federal Rules of Civil Procedure. For
instance, Federal Rule of Civil Procedure 53(a)(1)(B)(ii)
allows the appointment of a master to “hold trial proceed-
ings and make or recommend findings of fact on issues to
be decided without a jury if the appointment is warranted
by[] the need to perform an accounting or resolve a diffi-
cult computation of damages.” (emphasis added). The
2003 Advisory Committee Notes further indicate that
Rule 53(a)(1)(B)(ii) relates to “ministerial determinations
that require mastery of much detailed information but
that do not require extensive determinations of credibil-
ity.”
I see nothing about a jury trial on damages which can
be characterized as the “same” as a special master’s role
in an accounting other than the fact that both, at some
point, involve calculations.
C.
The majority’s next point is its policy argument—that,
since Congress passed § 1292(c)(2) to address the extraor-
dinary expense involved in the process of an accounting,
we should use § 1292(c)(2) to save parties from the ex-
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 21
penses involved in damages trials. Putting aside the
question of whether allowing interlocutory appeals in all
patent cases would truly result in cost savings—a premise
the finality rule itself soundly rejects—there is simply no
comparison between the equitable accountings of old and
a modern jury trial on damages. Presenting a damages
case may add to the length of a patent trial, but the added
time is measured in hours and days, not the many years
that prompted the exception for appeals of judgments that
are “final except for an accounting.” See George P. Dike,
The Trial of Patent Accountings in Open Court, 36 Harv.
L. Rev. 33, 36 n.7 (1922) (describing the elaborate proce-
dure employed when attempting to calculate an infring-
er’s profits and explaining that in a “typical case” “the
proceedings before the master alone extended over five
years”). The average patent trial, with a full damages
presentation, lasts approximately 7 to 14 days, not the
half a decade accounting procedures spanned. 7 See Timo-
thy J. Malloy, 1 Size Doesn’t Fit All in Patent Trials,
Law360 (October 28, 2010), http://www.law360.com/
articles/203660/1-size-doesn-t-fit-all-in-patent-trials.
Even accepting the majority’s conclusion that the poli-
cies advanced by its result today align with those which
prompted Congress to pass the predecessor to § 1292(c)(2)
in 1927, it is not our role to expand what Congress did to
7 Notably, the complexities involved in trying dam-
ages issues in patent cases are no different from those
entailed in other complex civil actions. Antitrust cases,
those involving securities fraud, and even those concern-
ing multi-layer insurance claims are just a few examples
of actions where damages presentations to juries must be
both sophisticated and lengthy. No one would presume to
exempt those cases from the normal rules governing
actions in Article III courts based on that reality. We
should not exempt patent cases from those rules either, in
the absence of a clear congressional intention to do so.
22 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
address a very specific problem into an entirely different
realm. See, e.g., Ebert v. Poston, 266 U.S. 548, 554 (1925)
(“The judicial function to be exercised in construing a
statute is limited to ascertaining the intention of the
legislature therein expressed. A casus omissus does not
justify judicial legislation. . . . [C]are and particularity in
treatment preclude expansion of the Act in order to in-
clude transactions supposed to be within its spirit, but
which do not fall within any of its provisions.”) (internal
citations omitted); Frank H. Easterbrook, Statutes’ Do-
mains, 50 U. Chi. L. Rev. 533, 548 (1983) (“Judicial inter-
polation of legislative gaps would be questionable even if
judges could ascertain with certainty how the legislature
would have acted. . . . What each Congress does binds the
future until another Congress acts, but what a Congress
might have done, had it the time, is simply left unre-
solved. The unaddressed problem is handled by a new
legislature with new instructions from the voters.”).
Absent any indication to the contrary, we must assume
that Congress contemplated an “accounting” when it used
the term “accounting,” and we should not broaden that
term’s definition to cover something as fundamentally
different as a jury trial, no matter what policy reasons we
might cite to justify such an expansion.
While I recognize that § 1292(c)(2) was expressly de-
signed to provide an exception for patent cases, Congress
has not indicated, nor do I believe that it is true, that a
determination of damages in a patent case is so burden-
some that it is to be treated differently than a determina-
tion of damages in every other kind of case. Rather, it is
far more plausible that the exception in § 1292(c)(2) was
enacted to address the unique burdens of a single onerous
type of proceeding in a patent case—one that has been the
focus of the exception since 1927 and is still today re-
served for the “rare” case involving incredibly complicated
determinations that a jury cannot be expected to handle
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 23
alone. See Dairy Queen, 369 U.S. at 478; see also Fed. R.
Civ. P. 53.
D.
The majority last points to the concept of stare decisis,
which it says “weighs in favor of [its] holding.” Maj. Op.
at 20. It says that, since we have exercised jurisdiction
over interlocutory appeals in the past, we should continue
to do so until Congress tells us not to. While stare decisis
is an important principle, it cannot serve as an excuse to
continue, ad infinitum, fundamentally incorrect legal
conclusions. This is especially so, moreover, where the
prior case law to which the majority points contains no
reasoned basis for their holdings regarding the scope of
§ 1292(c)(2). Indeed, in many of those cases we exercised
jurisdiction over the appeal before us without discussion
or even citation to § 1292(c)(2). To the extent our prior
cases do address the issue, they suffer from the same
flaws which pervade the majority opinion today—the
failure to distinguish adequately between an accounting
and a jury trial on damages. This en banc proceeding
provides us with the opportunity and authority to revisit
our prior case law and reasoning, and to correct the errors
therein.
The only definitive statements of this court regarding
our jurisdiction under § 1292(c)(2) pending a damages
trial come from In re Calmar, Inc., 854 F.2d 461 (Fed. Cir.
1988). It is this case upon which the motions panel relied
and to which the majority today says we must adhere. In
Calmar, a petitioner sought a writ of mandamus directing
the district court to vacate a sanctions order. 854 F.2d at
462. The district court determined that the petitioner had
misrepresented the law by stating that, “in a patent case,
you can appeal as of right from a holding of liability or no
liability” and that “it is very common to have a trial on
liability and have it go up on appeal, if the party is going
to appeal; and then after liability has been determined at
24 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
the appellate level, come down for a trial on damages.”
Id. at 462-63. The district court concluded that, “contrary
to [petitioner’s] assertions, 28 U.S.C. § 1292(c)(2) is silent
with respect to the timing of the damage phase of the trial
where liability has been found” and that, pursuant to
Rule 62(a), the damage phase should not be stayed unless
the court in its discretion determines a stay to be desira-
ble. Id.Finding counsel’s broad reading of § 1292(c)(2) to be
so absurd as to be sanctionable, the district court fined
counsel for having made the argument. When reviewing
the sanctions order on appeal, we examined the petition-
er’s statements and determined that the statements were
neither incorrect nor misleading. Id. at 463-64. We based
this holding on the panel’s understanding of the Supreme
Court’s decision in McCullough v. Kammerer Corp., 331
U.S. 96 (1947), and its determination that the purpose of
§ 1292(c)(2) was to “permit a stay of a damages trial.”
Calmar, 854 F.2d at 464. Thus, in Calmar, we stated:
[T]here is no conflict between § 1292(c)(2) and
Rule 62(a)’s grant of the discretion to stay or to
proceed with the damages trial during the appeal.
Indeed, in recognition of the district court’s discre-
tion, this court has repeatedly denied, in un-
published opinions, motions to stay damages
trials during appeals in patent cases.
Id. at 464. It is this language that has been repeated
throughout our case law, and used, without further analy-
sis, to justify interlocutory appeals pending a full trial on
damages or a determination of willfulness.
Despite the conclusion to the contrary in Calmar,
McCullough neither addressed the issue presented here
nor justified the conclusion that an “accounting” is equiva-
lent to a jury trial on damages. The patent infringement
suit in McCullough was brought in equity. There, the
district court had imposed the equitable remedy of an
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 25
injunction, along with the accounting it was required to
provide under the law at that time. Kammerer Corp. v.
McCullough, 39 F. Supp. 213, 214 (S.D. Cal. 1941) (stat-
ing that “plaintiffs are entitled to a permanent injunction
against the defendants and an accounting”). Thus,
McCullough did not involve a jury trial on patent damag-
es. And, the Court in McCullough did not at any time
suggest that a jury trial on damages is interchangeable
with an accounting. Further, the panel in Calmar did not
explain where it got its conclusion that McCullough
indicated that the purpose of § 1292 was “to permit a stay
of a damages trial” during the appeal of a judgment on
liability, something McCullough never said or considered.
Calmar, 854 F.2d at 464. Thus, it appears that
McCullough does not stand for the principle that
§ 1292(c)(2) was enacted to allow appeals when damages
trials have yet to occur, and Calmar provides no basis for
concluding otherwise.
Subsequent precedential case law from our court has
similarly failed to address or provide any reasoning
supporting the conclusion that jurisdiction arises under
§ 1292(c)(2) when a jury trial for damages remains. For
example, in H.A. Jones Co., v. KSM Fastening Systems,
Inc., 745 F.2d 630 (Fed. Cir. 1984), we found we had
jurisdiction when the issue of damages remained in an
action finding a party in contempt of a consent decree
signed several years earlier. No explanation or analysis
was provided, however, regarding why damages should be
treated the same as an accounting under § 1292(c)(2). 8
8 The decision in H.A. Jones is actually reconcilable
with a correct reading of § 1292(c)(2) if we assume the
court’s reference to “damages” there simply involved the
application of a previously determined royalty rate to new
sales, as to which the earlier infringement finding ap-
plied—i.e., what remained was a simple “accounting,” and
26 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
745 F.2d at 631-32. Likewise, in Trans-World Mfg. Corp.
v. Al Nyman & Sons, Inc., 750 F.2d 1552 (Fed. Cir. 1984),
we exercised jurisdiction over what the court described as
“a judgment, final except for an accounting” where the
trial on damages had been stayed, but we provided no
discussion of jurisdiction and did not even cite to
§ 1292(c)(2). 750 F.2d at 1558.
In Majorette Toys (U.S.) Inc. v. Darda, Inc. U.S.A.,
798 F.2d 1390 (Fed. Cir. 1986), an interlocutory appeal
was permitted pending a determination of attorney fees,
but the court cited no cases except McCullough. In Jo-
hannsen v. Pay Less Drug Stores Northwest, Inc., 918 F.2d
160 (Fed. Cir. 1990), we discussed Majorette and Calmar,
but based our determination that we lacked jurisdiction
under § 1292(c)(2) on the outstanding issue of liability for
unfair competition. Similarly, in Pods, Inc. v. Porta Stor,
Inc., 484 F.3d 1359, 1365 (Fed. Cir. 2007), we approvingly
cited to Majorette Toys for the proposition that an appeal
can be taken prior to determining damages, but ultimate-
ly found jurisdiction under § 1295, making our discussion
of Majorette Toys dicta.
In Special Devices, Inc. v. OEA, Inc., 269 F.3d 1340(Fed. Cir. 2001), drawing the distinction between the
appeal of an infringement finding and that of an “excep-
tional case,” we stated that “‘[a]ccounting,’ as used in the
statute, refers to infringement damages pursuant to 35
U.S.C. § 284” as opposed to attorney fees, but cited to no
authority for this interpretation. In Central Admixture
Pharmacy Services, Inc. v. Advanced Cardiac Solutions,
P.C., 482 F.3d 1347, 1353 (Fed. Cir. 2007), we stated that
we have jurisdiction where “the district court’s infringe-
ment judgment is final as to all issues except for a deter-
mination of damages,” citing to Mendenhall v. Barber-
Greene Co., 26 F.3d 1573 (Fed. Cir. 1994). But the hold-
no determination regarding the right to, type, or scope of
damages remained.
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 27
ing in Mendenhall does not relate to the interpretation of
§ 1292(c)(2) at issue here, and merely refers back to
statements made in Calmar. 26 F.3d at 1581. Finally, in
Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331 (Fed.
Cir. 2009), we stated that we possessed jurisdiction under
28 U.S.C. § 1292(c)(1) and (2) without citation or explana-
tion, where a trial on damages and willfulness was
stayed.
In sum, our past decisions lack any reasoned assess-
ment of whether we have jurisdiction over appeals of
judgments that are final except for a trial on damages.
We should not afford such decisions undue weight in
considering the issue presently before this court en banc.
Saying something repeatedly does not make it correct for
that reason alone.
***
For these reasons, I find none of the four points upon
which the majority relies to be persuasive predicates for
the court’s holding today, either singly or collectively. I do
not believe these points justify the expansive reading we
give to § 1292(c)(2). Patent actions in which jury trials on
damages remain pending should not be appealable to this
court barring alternative procedural mechanisms to
justify such appeals. 9
9 See, e.g., 28 U.S.C. § 1292(a)(1) (granting jurisdic-
tion to courts of appeals over appeals from “[i]nterlocutory
orders of the district courts of the United States . . .
granting, continuing, modifying, refusing or dissolving
injunctions, or refusing to dissolve or modify injunctions,
except where a direct review may be had in the Supreme
Court”); Cross Med. Prods., Inc. v. Medtronic Sofamor
Danek, Inc., 424 F.3d 1293, 1300 (Fed. Cir. 2005) (“Sec-
tion 1292(a)(1) provides that the court of appeals has
jurisdiction over appeals from interlocutory orders ‘grant-
28 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
IV.
The majority’s conclusion that the pendency of a re-
quest for a willfulness determination does not affect the
finality of a court’s other rulings in patent cases suffers
the same flaws its conclusion regarding the pendency of a
jury trial on damages suffers. Indeed, it is even less
defensible. Rather than assess whether a finding of
willfulness is an “accounting” under § 1292(c)(2), the
majority again asks only whether the fact of willfulness
was ever considered by special masters when assessing
the appropriate measure of an award to a patent holder in
a suit in equity. For reasons already explained, that is
simply not the relevant inquiry. This is so for all the
structural reasons I previously have discussed.
First, it violates the basic tenet that exceptions to the
finality requirement are to be narrowly construed. Digi-
tal Equipment Corp., 511 U.S. at 868 (“But we have also
repeatedly stated that the [collateral order doctrine is a]
‘narrow’ exception [and that it] should stay that way and
never be allowed to swallow the general rule that a party
is entitled to a single appeal, to be deferred until final
judgment has been entered, in which claims of a district
court error at any stage of the litigation may be ventilat-
ed.” (citing Richardson-Merrell, Inc. v. Koller, 472 U.S.
424, 436 (1985); United States v. Hollywood Motor Car
Co., 458 U.S. 263, 270 (1982)); Jones v. Nicholson, 431
F.3d 1353, 1358, n.3 (Fed. Cir. 2005) (“The Supreme
Court has emphasized that the exception to the rule of
finality is narrow . . . .”); Tele-Communications, Inc. v.
Comm’r, 12 F.3d 1005, 1007 (10th Cir. 1993) (“The poli-
cies behind the general rule and its narrow exceptions
include respect for the court, unfair surprise to the other
party, and the need for finality in litigation and conserva-
tion of judicial resources.”); Way v. Reliance Ins. Co., 815
ing, continuing, modifying, refusing or dissolving injunc-
tion, or refusing to dissolve or modify injunctions.’”).
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 29
F.2d 1033, 1034 n.4 (5th Cir. 1987) (“Narrow exceptions to
the finality rule do exist.” (emphasis added) (citing 9 J.
Moore & B. Ward, Moore’s Federal Practice ¶¶ 110.08-
110.13[12] (2d ed. 1986))). The notion that Congress used
a term which commonly connotes number crunching to
encompass inquiries regarding the objective reasonable-
ness of an infringer’s actions in light of the risks a patent
presents and that same party’s subjective motivations,
has an expansive rather than narrow reach.
Next, even if the question of whether a special mas-
ter’s “consideration” of the willful character of a party’s
infringement were relevant to the statutory analysis in
which we engage, the majority again ignores what it was
a special master had the authority to consider with regard
to willfulness. While it may be true that special masters
could consider issues of willfulness, and make recommen-
dations with respect thereto, they did not have the au-
thority to make willfulness findings—those were left to
the court. Indeed, a careful review of the cases the major-
ity cites reveals that, in none of those, did the special
master make a binding willfulness finding. See Cornely v.
Marckwald, 131 U.S. 159, 160 (1889) (stating that the
“court” overruled objections and affirmed the special
master’s report); see also Cornely v. Marckwald, 23
Blatchf. 163, 32 Fed. Rep. 292, 292 (C.C.N.Y. 1885) (court
overruling “exceptions” to the special master’s ruling);
Boesch, 133 U.S. at 699 (“Exceptions were filed to [the
special master’s] report, and overruled, and a final decree
entered in favor of Graff and Donnell . . . from which
decree this appeal has been prosecuted.” (emphasis add-
ed)); Pollock v. Martin Gauge Co., 261 F. 201 (7th Cir.
1919) (the decree of infringement originated from a dis-
trict judge, see Martin Gauge Co. v. Pollock, 251 F. 295,
300 (D.C. Ill. 1918), and was returned to said judge for an
accounting); K.W. Ignition, 283 F. at 874 (stating that the
special master recommended an award of punitive dam-
ages for willful infringement and that the district court
30 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
overruled a portion of the recommended damages); Reed
Roller Bit Co. v. Hughes Tool Co., 12 F.2d 207, 209 (5th
Cir. 1926) (noting that the special master recommended
his willfulness finding to the district court, and the dis-
trict court, “by way of punishment for willful infringement
assessed the cost of auditing the books of appellants,
amounting to $10,555” and entered a decree in favor in
appellee). Just as the court in equity was charged with
making the predicate findings necessary to a damages
calculation—findings now left to the jury—the court in
equity retained the authority and obligation to make
findings regarding both whether willfulness was proven
and the propriety of enhancing damages. Today, the
authority to make those findings is split between the
court and the jury. Bard Peripheral Vascular, Inc. v. W.L.
Gore & Assocs., Inc., 682 F.3d 1003, 1005 (Fed. Cir. 2012).
Nothing about those determinations—other than the final
calculation of the authorized enhancement—can be con-
sidered part and parcel of the ministerial calculations
involved in an accounting.
While it is true that a trial court ultimately may
choose to enhance damages based on a finding that in-
fringement has been willful, the underlying finding itself
is not about numbers. It is about the objective reasona-
bleness of the infringer’s actions in light of the risks of
infringing a valid patent, and that infringer’s intent vis-à-
vis the patentee’s rights. In re Seagate Tech., LLC, 497
F.3d 1360, 1371 (Fed. Cir. 2007) (en banc); Bard, 682 F.3d
at 1105-06. Those predicate inquiries do not impact the
damages calculation unless a trial court, in its discretion,
later chooses to enhance damages based upon them.
Seagate, 497 F.3d at 1368 (“[A] finding of willfulness does
not require an award of enhanced damages; it merely
permits it.”); Odetics, Inc. v. Storage Tech. Corp., 185 F.3d
1259, 1274 (Fed. Cir. 1999) (“[T]he decision to grant or
deny enhanced damages remains firmly within the scope
of the district court’s reasoned discretion, informed by the
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 31
totality of the circumstances.”). While, at times, special
masters in equity proceedings may have made recom-
mendations regarding the question of whether to enhance
damages, they had no authority to make the findings
necessary to give rise to such enhancement.
The majority’s reliance on claimed efficiencies from
lumping willfulness determinations into an accounting is
unpersuasive, moreover. Under our case law, a determi-
nation of willfulness overlaps considerably with issues of
infringement and validity. Under Seagate, we made clear
that the objective risks of infringing a valid patent are
“determined by the record developed in the infringement
proceeding.” 497 F.3d at 1371. And, in Bard, we ex-
plained that “the threshold determination of reckless-
ness . . . entails an objective assessment of potential
defenses based on the risk presented by the patent. Those
defenses may include questions of infringement but also
can be expected in almost every case to entail questions of
validity . . . .” 682 F.3d at 1006. In cases where indirect
infringement is alleged, the overlap between willfulness
and infringement is even more pronounced. In Global-
Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011),
the Supreme Court held that “induced infringement
under § 271(b) requires knowledge that the induced acts
constitute patent infringement,” but that this require-
ment of knowledge can be met when an infringer has been
willfully blind to the fact that induced acts constitute
infringement. 131 S. Ct. at 2068. According to the Court,
“a willfully blind defendant is one who takes deliberate
actions to avoid confirming a high probability of wrongdo-
ing and who can almost be said to have actually known
the critical facts.” Id. at 2070-71. Thus, assessing “willful
blindness” is very similar to assessing recklessness under
Seagate.
Allowing an appeal of liability issues and then allow-
ing a separate appeal of willfulness would thus require
revisiting many of the same facts and issues in two sepa-
32 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
rate proceedings. The cause of efficiency would not only
not be served, it would be thwarted.
The fact that these two proceedings would be before
two separate juries raises serious constitutional ques-
tions, moreover. See Gasoline Prods. Co. v. Champlin Ref.
Co., 283 U.S. 494, 500 (1931) (A partial new trial violates
the Seventh Amendment “unless it clearly appears that
the issue to be retried is so distinct and separable from
the others that a trial of it alone may be had without
injustice.”); Witco Chem. Corp. v. Peachtree Doors, Inc.,
787 F.2d 1545, 1549 (Fed. Cir. 1986) (“[I]t is inappropri-
ate, in light of the evidence presented and arguments
made at this trial, to have one jury return a verdict on the
validity, enforceability and contract questions while
leaving the infringement questions to a second jury.”); see
also Pryer v. C.O. 3 Slavic, 251 F.3d 448, 455 (3d Cir.
2001) (indicating that damages and liability should be
retried together when, inter alia, “there is reason to think
that the verdict may represent a compromise among
jurors with different views on whether defendant was
liable” (citations and internal quotation marks omitted));
FIGA v. R.V.M.P. Corp., 874 F.2d 1528, 1534 (11th Cir.
1989) (determining that a partial retrial of damages alone
was inappropriate where evidence related to damages also
“related to the alleged intent of the insured for intention-
ally causing [a] fire”); Stanton v. Astra Pharm. Prods.,
Inc., 718 F.2d 553 (3d Cir. 1983) (determining that “allow-
ing a second jury to determine the issue of damages in
isolation from the whole of the circumstances surrounding
the case” would result in injustice (citation and internal
quotation marks omitted)). A bifurcation order which
requires that two different juries visit the interwoven
issues and overlapping facts involving infringement and
validity on the one hand and willfulness on the other
would violate the defendant’s Seventh Amendment right
to a jury trial.
ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. 33
Again, while the majority is correct that we did not
order this en banc to answer the question of whether
bifurcation of willfulness questions in such a way as to
assure that they be tried to separate juries raises consti-
tutional issues, the fact that it does is not irrelevant.
Although the majority feels comfortable ignoring this
reality, the real questions are whether Congress would
have done so, or would have had the authority to do so, in
1948. The answer to both of those inquiries must be no. 10
10 The majority cites to Voda v. Cordis Corp., 536
F.3d 1311, 1329 (Fed. Cir. 2008), for the proposition that
sending the willfulness determination to a different jury
than the one that assessed validity and infringement does
not violate the Seventh Amendment. The entirety of the
constitutional analysis in Voda is set out in one sentence:
“Additionally, we reject Cordis’s argument that, under the
Seventh Amendment, a new trial on willfulness would
require a new trial on infringement.” Voda, 536 F.3d at
1329. There is no citation to the Supreme Court’s deci-
sion in Gasoline Products, to our own earlier decision in
Witco endorsing and following the principles of Gasoline
Products, or to the myriad cases from the regional circuits
doing the same. To the extent Voda purported to answer
the Seventh Amendment question for all cases and in all
circumstances in that one sentence, as the majority
implies, it should be revisited. The question of whether
issues are sufficiently separable and distinct to permit
trial to different juries is to be determined on a case by
case basis considering the totality of circumstances. See
Witco Chem. Corp., 787 F.2d at 1549, and cases collected
therein (determining that a partial new trial is inappro-
priate “after considering the totality of the circumstanc-
es”). Where the circumstances confirm that the issues to
be addressed in the separate trials are as interwoven as
they are whenever willful infringement allegations are
bifurcated, a separate trial of that claim alone would
34 ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP.
***
I see nothing in the majority’s decision that a modern
willfulness determination is encompassed within the
meaning of an accounting under § 1292(c) to commend it;
once more, it just cannot be correct.
V.
Absent any justification—let alone a compelling one—
that a jury trial on damages or a determination of willful-
ness is literally an “accounting” within the meaning of
§ 1292(c)(2), I must dissent from the majority’s determi-
nation that we possess jurisdiction over this appeal. This
matter is non-final and must be remanded to the district
court.
rarely, if ever, pass constitutional muster under such an
analysis.