Retractable Technologies v. Becton, Dickinson & Co., 2:07cv250 (5/13/13)
Judge: Roy Payne
Holding: Motion to Conform Judgment to Federal Circuit Mandate DENIED
Interesting procedural situation here. Verdict of infringement by two products with one consolidated damages award of $5 million in a patent/antitrust case. On appeal, the parties didn’t address, nor did the Federal Circuit, the damages award. That court affirmed the jury finding of infringement as to one of defendant’s products, affirmed the finding of no invalidity, and reversed the infringement finding as to the second product accused. The judgment of the Federal Circuit, issued as mandate, reads: “Reversed in part and affirmed in part.” The damage award was not ever vacated. There is no remand, nor did the opinion discuss any further proceedings in the district court.
Defendant filed a motion to “conform the judgment to the Federal Circuit mandate” citing FRCP 60(b)(5), a hole that Judge Payne found to be a questionable location for defendant’s peg. The order does not set out what the defendant was seeking in the motion, but indicates that it was some sort of reduction of the damages award to allocate damages between the products and reduce the amount of the judgment to what the defendant claimed was the portion of the damages award attributable to the product as to which infringement was affirmed. Judge Payne declined to do so, holding that Fifth Circuit caselaw known as the “mandate rule” precluded further adjudication as to unappealed-from portions of the judgment, here the amount of the damages award. Nor was revising the judgment as simple as the defendant claimed:
Determination of the effect of the reversal of the infringement finding as to the 3 mL Integra (but not the 1 mL Integra) syringes is not a simple matter of arithmetic as BD argues. RTI points out numerous issues that would have been presented to the Federal Circuit on the initial appeal if BD had decided to appeal the damage award. Since neither expert suggested the numbers awarded by the jury, the court would have to weigh the expert testimony and other damage evidence to redetermine the damages for each accused product. These are matters that should have been presented to the Federal Circuit on appeal and not raised for the first time in this court.
The injunction had, however, been appealed, so the Court did modify the judgment to exclude the 3 mL Integra from the injunction.