Summary
construing a motion under Rule 60 as one under Rule 60(b)
Summary of this case from Chandler v. WilsonOpinion
No. CV 01-10396 LGB (CWx).
November 15, 2004
ORDER DENYING DEFENDANTS' MOTION FOR CLARIFICATION UNDER RULE 60(a)
I. INTRODUCTION
On February 4, 2004 this Court found that plaintiffs Aspex Eyewear and Contour Optik lacked standing to sue defendants Miracle Optics and Viva Optique over the alleged infringement of U.S. Patent No. 6,109,747 ("'747 Patent"). The Court accordingly dismissed plaintiffs' lawsuit as it related to that patent claim. However, that decision did not expressly negate the Court's prior rulings about the construction of the '747 Patent and defendants' infringement of the '747 Patent.
Defendants, who are currently crafting their appeals and cross-appeals related to this case, ask the Court to vacate its prior rulings in order to clarify the issues on appeal. Plaintiffs oppose the motion.
II. FACTUAL AND PROCEDURAL BACKGROUND
In March 2001 plaintiffs Aspex Eyewear, Manhattan Design Studio, Contour Optik and Asahi Optical (collectively "Aspex") filed a patent infringement action against defendant Miracle Optics. The action was originally filed in the district court for the Southern District of New York in March 2001, but the case was transferred to this Court in January 2002.
The complaint initially listed only Miracle, but Viva Optique was added as a defendant in December 2003. Viva purchased Miracle in 2003, and Miracle has effectively ceased operating as an independent entity.
The lawsuit contained claims related to two separate patents — patent numbers 6,109,747 ("'747 Patent") and 5,568,307 ("'207 Patent"). The '207 Patent was later integrated into reissued patent RE 37,545 E ("'545 Patent"), and Aspex filed an amended complaint which reflected this change. This Court granted Miracle's motion for summary judgment on the '545 Patent on August 8, 2003, finding that Miracle did not infringe on the patent. The dismissal of the '545 Patent claims left only Aspex and Contour as plaintiffs with respect to the '747 Patent claims.
Claims 1 and 2 of the '207 Patent were included in the '545 Patent, which included several other claims. Aspex later dropped Claims 1 and 2 from its '545 Patent complaint. ((Defendants' Notice of Motion and Motion for Attorneys' Fees ("Motion"), Hurvitz Decl., Ex. N at 2:2-6.)
The Court made three rulings on the '747 Patent which are at issue in this motion. First, on February 14, 2003 the Court issued an order which construed the claims contained in the '747 Patent. Second, on October 28, 2003, the Court granted partial summary judgment to Aspex and Contour, finding that Miracle had literally infringed on Claim 12 of the '747 Patent. Third, on December 4, 2003, the Court granted Aspex and Contour's motion to add Viva as a defendant in this action.
These three rulings were called into question on December 12, 2003, when Viva and Miracle (collectively "Viva") moved for dismissal of the suit — which at that point only involved the '747 Patent — for plaintiffs' lack of standing. Viva argued that Aspex and Contour did not have standing because, at the time of the filing of the lawsuit, they did not have rights to the '747 Patent. The Court granted the motion on February 4, 2004, finding that both Contour and Aspex lacked standing on the '747 Patent when they first filed the lawsuit.
III. ANALYSIS
Viva asks the Court to vacate the three '747 Patent rulings which preceded dismissal of the lawsuit. Viva cites Federal Rule of Civil Procedure 60(a) as the basis for its motion. Rule 60(a) focuses on relief from clerical mistakes and Viva argues that the Court committed such a mistake when its February 4, 2004 Order failed to expressly vacate the Court's earlier '747 Patent rulings.
The Court does not agree that this omission was the sort of "clerical mistake" that is the proper subject of a Rule 60(a) motion. Based on the substance of Viva's argument, the Court instead construes this motion as one which is based on Rule 60(b)(4) — relief from judgment because "the judgment is void."
Viva argues that a district court must vacate its prior rulings whenever it determines that it lacked subject matter jurisdiction when it made those rulings. (Motion at 6:13-19.) Viva cites two cases in support of this principle: Orff v. U.S., 358 F.3d 1137 (9th Cir. 2004) and Morongo Band of Mission Indians v. California State Board of Equalization, 858 F.2d 1376 (9th Cir. 1988). For the reasons described below the Court finds that neither case mandates that a district court vacate its prior rulings on the merits when, as is the case here, the court's lack of jurisdiction is currently on appeal.
The plaintiffs in Orff sued the United States government over certain water contracts. 358 F.3d at 1141. The district court initially found that the government had waived its sovereign immunity, and it ruled that plaintiffs had raised triable issues of fact on one of their claims. Id. at 1142. The district court later reversed itself and found that the government did not waive its sovereign immunity. Id. The plaintiffs appealed the ruling. Id. The Ninth Circuit affirmed the sovereign immunity ruling and vacated the district court's prior rulings on the merits of the plaintiffs' claims. Id. at 1149.
The Ninth Circuit did not explain why the district court's rulings on the merits of the plaintiffs' claims were relevant to the case. However, the Ninth Circuit's discussion suggests that the government may have wanted to preserve the district court's dismissal of three of the plaintiffs' claims on the merits.Orff, 358 F.3d at 1150 (noting that a case "relied on by the government" does not prevent the appellate court from vacating the district court's prior rulings on the merits).
In Morongo the plaintiff leased Indian trust land that was beneficially owned by the defendant landowner. 858 F.2d at 1379. The plaintiff later claimed that the lease was invalid, and the defendant filed a counterclaim for the reasonable value of the rented land. Id. The district court, assuming that it had jurisdiction, granted summary judgment on both claims. Id. All parties appealed, but they all asserted that the district court had jurisdiction over the claims. Id. at 1379-80. The Ninth Circuit ruled that there was no jurisdiction. Id. at 1386. It accordingly vacated the district court's prior rulings and remanded for dismissal of the case. Id. Orff and Morongo stand for the principle that a district court's ruling on the merits of a case is a nullity if the court lacked jurisdiction at the time of the ruling. However, these cases are silent regarding what a district court must do when the issue of jurisdiction is on appeal. Nothing in Orff, which is closer to the facts of the instant case, compels a district court to automatically vacate its prior rulings on the merits whenever that court finds that it lacked jurisdiction over the case. The district court in Orff did not vacate its prior rulings on the merits prior to the Ninth Circuit's decision, and the Ninth Circuit never stated that such action was required.
Aspex argues that the Court's jurisdiction over the defendant's counter-claims was sufficient to provide jurisdiction with respect to the three rulings that are being challenged here. (Plaintiffs' Opposition to Defendants' Motion ("Opposition") at 3:24-27, 4:8-11.) This argument focuses on Miracle's state law counter-claim that the plaintiffs "knew that Miracle's products do not infringe upon the '747 and '207 Patents, yet they made false statements orally and in writing alleging that Miracle's products infringe on the '747 and '207 Patents." (Miracle's First Amended Answer to Plaintiff's First Amended Complaint ("Amended Answer"), ¶ 85.) According to Aspex, the counter-claims gave the Court jurisdiction to construe the '747 Patent, to make a finding of literal infringement on the '747 Patent, and to add Viva as a defendant. (Opposition at 4:8-11.)
Because the Court denies the motion on other grounds, it will not address Aspex's theory of jurisdiction.
Since the Court is not compelled to vacate its prior rulings on the merits while a jurisdiction appeal is pending, the remaining question is whether the Court should vacate those prior rulings.
Viva argues that vacation of the prior rulings is necessary to "save the parties the unnecessary expense and effort involved in briefing and resolving issues concerning the summary judgment and claim construction (Markman) rulings with respect to the '747 Patent . . . only to have the Federal Circuit determine they are moot." (Motion at 4:2-6.) This argument is unavailing. While Viva is correct that some expense would be saved by vacating these prior rulings, Viva ignores the consequences if the Federal Circuit were to reverse this Court's dismissal of the case, including the added costs and complications of reinstating or even relitigating the same issues. Since the Court's order of dismissal is currently on appeal, it is premature to vacate the court's prior decisions until after the appellate court has decided the appeal. The Court therefore DENIES Viva's Rule 60 Motion for Clarification.
The Court also notes that Viva likely could have prevented the "unnecessary expense and effort involved in briefing and resolving" the October 28, 2003 summary judgment motion. In other filings before this Court, Viva admitted that it had notice as early as August 2003 that Aspex's standing to sue for infringement of the '747 Patent was questionable. Specifically, in late August 2003 the U.S. District Court for the Northern District of Texas dismissed Aspex's '747 Patent claim against another party, E'lite Optik. (August 26, 2003 Order, Civil Action No. 3:00-CV-2010-L ("Texas Order")). The dismissal was for Aspex's lack of standing, and Viva received a copy of the order on August 28, 2003.
Despite having notice of the standing problem in August 2003, Viva waited until December 2003 to file a motion in this Court to dismiss the case for plaintiffs' lack of standing. Viva could have informed this Court of the Texas order, and filed its motion to dismiss, weeks before the Court granted Aspex's summary judgment motion on October 28, 2003. Having failed then to inform the Court and move for dismissal, Viva cannot now argue that it should be relieved of the burden of the October 28 summary judgment order.
IT IS SO ORDERED.