Cite as: 508 U. S. 83 (1993)
Opinion of the Court
rate judgments: one dismissing the action for infringement with prejudice, and another on the counterclaim, declaring the patents invalid.5
Again, Morton appealed to the Federal Circuit, challenging both the dismissal of its infringement claim and the judgment of invalidity. Cardinal filed a cross-appeal contending that it was entitled to an award of fees pursuant to 35 U. S. C. § 285 and that Morton should be sanctioned for prosecuting a frivolous appeal. The defendant in the third, Delaware, case filed a brief amicus curiae urging the court to affirm the judgment of invalidity.6 Again, however, after affirming the dismissal of the infringement claim, the Federal Circuit vacated the declaratory judgment. It explained:
"Since we have affirmed the district court's holding that the patents at issue have not been infringed, we need not address the question of validity. Vieau v. Japax, Inc., 823 F. 2d 1510, 1517, 3 USPQ 2d 1094, 1100 (Fed. Cir. 1987). Accordingly, we vacate the holding of invalidity." 959 F. 2d 948, 952 (1992).
The court also ruled that Morton was not liable for fees because it had advanced an argument that "apparently it was not in a position to raise earlier." Ibid. Judge Lourie concurred in the result, but believed the parties were entitled
guage of the [claims] is too vague to satisfy the definiteness requirement of § 112." App. to Pet. for Cert. 67a.
5 "Now, therefore, "IT IS ORDERED that the Clerk is directed to enter judgment for the defendants in this case, dismissing the plaintiff's action for infringement with prejudice and at its costs.
"IT IS FURTHER ORDERED that the Clerk is directed to enter judgment for the defendants on their counterclaim of invalidity of the patents, as patents 4,062,881 and 4,120,845 are found to be invalid." Id., at 70a.
6 See 959 F. 2d, at 950, n. 2 (referring to Morton International, Inc. v. Atochem North America, Inc., No. 87-60-CMW (Del., filed Feb. 9, 1987)). Atochem has also filed a brief amicus curiae in this Court, urging our reversal of the Federal Circuit practice.
87
Page: Index Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 NextLast modified: October 4, 2007