In EPLUS, INC. v. LAWSON SOFTWARE, INC., Appeal No. 13-1506, the Federal Circuit vacated an injunction and a contempt order because both were based on a claim cancelled in reexamination.
The Federal Circuit had previously remanded this case to the district court for modification of a permanent injunction in light of the Federal Circuit’s holding on the invalidity and infringement of the asserted claims. On remand, the district court modified the injunction and found Lawson in civil contempt for violating the injunction. Lawson appealed the injunction again, as well as the contempt order.
The Federal Circuit vacated the injunction. It found no legal basis to enjoin Lawson’s conduct because the rights that the asserted claim previously conferred had ceased to exist as a result of the claim’s cancellation in reexamination. With regard to the civil contempt order, the Federal Circuit held that civil contempt sanctions must be set aside when the underlying injunction is reversed on appeal. The Federal Circuit stated that it had previously held that “the cancellation of a patent requires that non-final judgments be set aside because the ‘cancelled claims [a]re void ab initio.’” The Federal Circuit explained that the injunction was not considered final at the time the district court imposed civil contempt sanctions against Lawson and vacated the district court’s contempt order.
In dissent, Judge O’Malley disagreed with the majority on the issue of finality and argued that the majority should have considered the merits of Lawson’s appeal from the trial court’s civil contempt findings.