Two Steps Forward, One Step Back • 2011 11 22 TwoStepsThe end of October was a quiet IP week at the Federal Circuit. It issued these two orders, which moved one case forward and let another case go.

Robert Bosch LLC v. Pylon Manufacturing Corp., Nos. 2011-1363, -1364 (Fed. Cir. Oct. 24, 2011) (Judge Prost) (nonprecedential order)

By Marynelle Wilson

We recently covered the Bosch case, which cleared up some important points about the status of permanent injunctions and irreparable harm after eBay. That opinion was an appeal only of the trial court’s decision to deny Bosch’s injunction request.

The case at the trial court kept going after the injunction decision. Pylon claimed that one of Bosch’s patents is unenforceable, arguing that Bosch committed inequitable conduct by not listing an additional inventor. The district court disagreed with Pylon, and Pylon appealed.

Bosch asked the Federal Circuit to dismiss this appeal, arguing that the Federal Circuit doesn’t have jurisdiction (the power to hear the case), because the district court still needs to decide some issues—namely, damages and willful infringement. (The trial court bifurcated (separated) those issues, so the trial court didn’t address them at the same time as the inequitable conduct charges.) The Federal Circuit said, in an August order, that it does have jurisdiction under 28 U.S.C. § 1292(c)(2) because the case is “final except for an accounting.”

Bosch asked the court to reconsider that order. Bosch contended that a “jury trial . . . on the issues of damages and willfulness” is different from “an accounting.” The court said no. According to the court, the purpose of this section of the patent law is to let the Federal Circuit move forward with an appeal before a district court has dealt with damages. So, the court can go ahead with the inequitable conduct appeal.

Read the Bosch order here.

FLFMC, Inc. v. Wham-O, Inc., No. 2011-1067 (Fed. Cir. Oct. 19, 2011) (Judges Linn, Dyk, and Prost) (per curiam) (nonprecedential order)

By Matthew Levy

Back when the America Invents Act was passed, we told you about some early potential fallout in a false marking case. The court asked the parties to tell them what it should do in light of Section 16 of the Act, which basically shuts down nearly all private false marking actions. Well, the court has decided what it wants to do.

The parties asked the court to vacate the lower court’s decision, which held that FLFMC didn’t have standing, and dismiss the case. Why would the parties do this? It’s basically an agreement to walk away. If the lower court’s decision stood, there was a possibility of getting legal fees awarded. Rather than fight any more, the parties asked the Federal Circuit to clear everything out and let them go their separate ways.

The court agreed. It noted that the new law was beyond the parties’ control, so it was appropriate to vacate the district court’s decision and order the case to be dismissed.

You can read the FLFMC order and see if you think the court handled things the right way.