United States District Court, D. Massachusetts
BRIGHAM AND WOMEN'S HOSPITAL, INC. and INVESTORS BIO-TECH, LP.
PERRIGO COMPANY and L. PERRIGO COMPANY
MEMORANDUM AND ORDER
ZOBEL SENIOR UNITED STATES DISTRICT JUDGE.
parties have filed a series of post-judgment motions.
Defendants Perrigo Company and L. Perrigo Company
(collectively, "Perrigo") renew their motions for
judgment as a matter of law on all issues that were tried to
a jury in late December 2016 and, in the alternative, move
for a new trial. See Dockets ## 247, 249, 252, 255.
Perrigo also moves for an extension of time to file a notice
of appeal to the Federal Circuit. See Docket # 268.
Plaintiffs Brigham and Women's Hospital, Inc., and
Investors Bio-Tech, L.P. (collectively, "Brigham")
oppose all these motions and also move for attorney's
fees (Docket # 239) and enhanced damages (Docket # 244).
court held an eight-day jury trial which concluded on
December 14, 2016, with a jury verdict in favor of
plaintiffs. See Docket # 222. Specifically, the jury
found (1) direct, induced, contributory, and willful
infringement by Perrigo of all asserted claims of U.S. Patent
No. 5, 229, 137 ("the '137 patent"); (2) an
effective priority date of March 1990; and (3) all asserted
claims valid. It awarded Brigham $10, 210, 071 in
damages and rejected Perrigo's laches defense,
finding that Brigham knew or should have known of their
infringement claim against Perrigo as of August 11, 2008.
December 19, 2016, judgment was entered that simply stated
that "[t]his action came before the court for a trial by
jury. The issues have been tried and the jury has rendered
its verdictJudgment entered for Plaintiffs."
See Docket # 227. The amount of damages was not included.
Shortly after judgment entered, the parties filed a joint
motion for extension of time for post-trial motions, seeking
to extend the deadlines to file motions for judgment as a
matter of law and/or new trial and motion for attorney's
fees to January 24, 2017, which the court granted by
endorsement. Docket ## 237 and 238. It was only after Brigham
filed their oppositions to Perrigo's renewed motions for
judgment as a matter of law, however, that the parties raised
a potential conflict with the Federal Rules of Civil and
Appellate Procedures regarding the timeliness of
Perrigo's post-trial motions and notice of appeal.
the parties submitted their post-trial briefing regarding the
timeliness issue, the court raised initial concerns about the
judgment entered on December 19, 2016, specifically, whether
it constituted a final judgment that would trigger the clock
on the relevant procedural rules because it failed to include
any damages, as well as the jury's special verdict on the
several claims and defenses. It also failed to address the
issue of enhanced damages that had yet to be decided.
Accordingly, I requested the parties to submit supplemental
briefing regarding these questions and, if necessary, the
remedy. See Dockets ## 278 and 279. Thus, before
addressing the post-trial motions, the threshold question to
be resolved is whether a proper judgment was entered in this
"judgment" under the Federal Rule of Civil
Procedure is "a decree and any order from which an
appeal lies." Fed.R.Civ.P. 54(a). The Supreme Court has
explained that "there is no statute or rule that
specifies the essential elements of a final judgment, and
[the] Court has held that '[n]o form of words and no
peculiar formal act is necessary to evince [the] rendition
[of a judgment.]" United States v. F. & M.
Schaefer Brewing Co.. 356 U.S. 227, 233 (1958) (quoting
United States v. Hark. 320 U.S. 531, 534 (1944));
see also Alloyd Gen. Corp. v. Blda. Leasing Corp..
361 F.2d 359, 362 (1st Cir. 1966) (explaining that a final
judgment is one that does not leave the suit pending for
further proceedings and "clearly evidence[s] the
district court's intention that it shall be its final act
in the case").
contends that the December 19, 2016, entry is not a final and
appealable judgment because it "did not expressly
dispose of Perrigo's counterclaims of invalidity,
non-infringement, and laches." Docket # 278, at 3.
Perrigo also argues that the December 19 entry does not
satisfy Federal Rule of Civil Procedure 58 because it is
"incomplete" as it does not "identify which
claims of the asserted patent were found infringed and not
invalid and, as the Court pointed out, is silent on
damages." Id. at 5-6.
the judgment lacks the details found on the jury's
special verdict form, Perrigo's assertion that the issues
of non-infringement, obviousness, and laches remain
outstanding and were not disposed of by the jury's
verdict is incorrect. Here, the court instructed the jury to
decide all three issues by answering the questions on the
verdict form with no objections from Perrigo. Indeed, during
Perrigo's closing argument to the jury, it re-iterated
the court's instruction and explained that "if
[Brigham's] delay [was] unreasonable and Perrigo was
harmed because of that delay, then there can be no monetary
damages and that's Perrigo's equitable defense of
laches." Docket # 235, at 81:12-15. Perrigo explicitly
acknowledged that the jury would have to decide whether
"plaintiff's delay [was] unreasonable and was
Perrigo harmed as a result of it." Id. at
81:24-82:1. Accordingly, "[t]he instruction [on laches]
was not given to seek a merely advisory verdict on the issue.
The jury rejected the defense." Simon Prop. Grp.,
L.P. v. mySimon. Inc.. No. IP 99-1195-C H/G, 2001 WL
66408, at *16 (S.D. Ind. Jan. 24, 2001). Likewise, Perrigo
never objected to having the jury decide the question of
obviousness. Here too, the jury found that Perrigo had failed
to prove invalidity of any of the asserted claims of the
'137 patent for both obviousness and anticipation, and
thus rejected Perrigo's counterclaim. See Connell v.
Sears. Roebuck & Co.. 722 F.2d 1542, 1547 (Fed. Cir.
1983) ("We hold that it is not error to submit the
question of obviousness to the jury."); see also
Wyers v. Master Lock Co.. 616 F.3d 1231, 1248 (Fed. Cir.
the only matter that remains outstanding is the issue of
enhanced damages. Docket # 275, at 9:15. The Federal Circuit,
however, has exclusive jurisdiction of "an appeal from a
judgment in a civil action for patent infringement which
would otherwise be appealable to the [Federal Circuit] and is
final except for an accounting." 28 U.S.C.
§ 1292(c)(2) (emphasis added). "The Federal Circuit
has ruled that, as a result [of the § 1292 exception],
claims for enhancement of damages do not have to be addressed
in order to have a final judgment." Open Text S.A.
v. Box. Inc.. No. 13-CV-04910-JD, 2015 WL 4940798, at
*10 (N.D. Cal. Aug. 19, 2015) (citing PODS. Inc. v. Porta
Star. Inc.. 484 F.3d 1359, 1365 n. 4 (Fed. Cir. 2007),
appeal dismissed (Apr. 4, 2016)). Although Perrigo
asserts that the December 19 entry does not qualify for the
exception to the final judgment rule under 28 U.S.C. §
1292(c)(2), it fails to provide any support for this argument
other than re-asserting that the entry "did not dispose
of Perrigo's counterclaims of invalidity,
non-infringement, and laches, and thus the § 1292
exception does not apply." Docket # 278, at 5.
it is difficult to accept in earnest Perrigo's argument
that the "12/19 Entry [did not] constitute a final
and appealable judgment such that it would trigger the
deadlines for filing Perrigo's post-trial motions and
Notice of Appeal, " Docket* 278, at 2, based on its
actions. In particular, shortly after the jury returned its
verdict, Perrigo sought entry of judgment from the court in
order to "determine deadlines for post-trial motions,
" Docket # 280-2, at 2, and then proceeded to act in
accordance with an understanding that the judgment was final
by submitting post-trial briefing. E.g.. Docket #
268, at 1 (explaining in its motion for extension of time to
file notice of appeal that "[t]he Court entered Final
Judgment in favor of Plaintiffs on December 19, 2016.");
cf R.& M. Schaefer Brewing Co.. 356 U.S. at
235-36 (looking at "[t]he actions of all concerned"
when determining whether the parties "understood the
opinion to be the judge's .. . final judgment in the
Post-Trial Briefing and Defendants' Motion to Extend Time