Case Cite

Robert Bosch, LLC v. Pylon Manuf. Corp., Nos. 2011-1363, 2011-1364, 2013 WL 2664281 (Fed. Cir. June 14, 2013).

IPDQ Commentary

The Federal Circuit concluded its interlocutory jurisdiction extends to cases where the district court’s judgment is final (1) except for a trial on damages, or (2) where issues of willfulness remain undecided. At this point, an appeal to the Supreme Court seems certain.

Case Summary

The Federal Circuit sua sponte took the case en banc to answer two questions:

  • First, does 28 U.S.C. § 1292(c)(2) confer jurisdiction 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? Id. at *1.

The “final judgment” rule is set forth in 28 U.S.C. § 1295(a)(1). Id. Section 1292(c)(2) sets forth an exception to the rule, providing for an appeal to the Federal Circuit where a judgment that would be final “except for an accounting.” Id. Thus, the disposition of the case turned on the meaning of “accounting.” Id.

Answering both questions in the affirmative, the majority of the en banc panel concluded:

“Accounting” Includes Calculation of Profits and Damages – The court ascertained the historical meaning of accounting. Id. at *2. After a lengthy review of cases and applicable statutes, the court said “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.” Id. at *6.

  • “Accounting” Includes a Jury Trial on Damages – The court rejected Bosch’s assertion an “accounting” must be limited to a special master’s determination of damages, based on four points:
    • In 1948, Congress expanded jurisdiction over interlocutory appeals from cases in equity to “civil actions for patent infringement which are final except for accounting.”
    • The issues historically decided in accountings are the same as those decided in damages trials today.
    • The reasons Congress gave for allowing interlocutory appeals for an accounting apply equally to damages trials.
    • Stare decisis allows interlocutory appeals where liability has been decided and a damages trial remains. Id. at *6-10.
  • 28 U.S.C. § 1292(c)(2) Confers Jurisdiction When Willfulness Outstanding – The inquiry begins and ends with the historical meaning of “accounting.” Id. at *10. At the time the statute was passed, an accounting included the determination of willfulness. Id. Based on a review of the statute, “[I]t is clear that an accounting, both prior to and after Congress’s grant of interlocutory jurisdiction over cases that are final except for an accounting, included the determination of willfulness.” Id. at *12.

The court made clear that the district court may, at its discretion, bifurcate willfulness and damages issues from liability issues in any given case. Id.

Judge Moore and Judge Reyna filed separate opinions concurring in part and dissenting in part. Both agreed 28 U.S.C. § 1292(c)(2) confers jurisdiction where judgments are final except for a determination of damages, but both disagreed with the majority’s conclusion that appellate jurisdiction exists when willful infringement issues remain.

Judge O’Malley, joined by Judge Wallach, dissented.