594 F. App'x 649
Fed. Cir.2014Background
- Metso sued Powerscreen for infringement of the ’618 patent; a jury awarded $15.8M, later doubled to $31.6M for willfulness.
- Powerscreen appealed; nearly six months after notices of appeal the district court entered orders requiring a $50M supersedeas bond and provided that Metso would bear its pro rata share of the bond cost if it did not recover that amount. Metso did not appeal the bond orders.
- This court reversed the infringement judgment and held "no costs" on the appeal in Metso Minerals, Inc. v. Powerscreen.
- After the mandate, Powerscreen sought release of the bond and reimbursement of the bond premium ($400K, later amended to $500K).
- The district court awarded Powerscreen $400K, then corrected the judgment under Rule 60(a) to add the additional $100K, finding the omission a clerical mistake.
- On appeal, the Federal Circuit considered whether its prior "no costs" mandate barred the district court’s award of bond premium costs and whether the Rule 60(a) correction was proper; it affirmed.
Issues
| Issue | Metso's Argument | Powerscreen's Argument | Held |
|---|---|---|---|
| Whether the Federal Circuit’s prior "no costs" mandate foreclosed district-court award of supersedeas bond premiums | The prior mandate of "no costs" encompassed bond premiums, so district court lacked authority to award them | The bond orders were entered after the notices of appeal and thus were not before the court on appeal; the mandate did not cover bond premiums | Mandate did not preclude bond-premium award because bond orders were not within the scope of the appealed judgment or presented on appeal |
| Whether any on-the-record colloquy or agreement relieved Metso of pro rata bond liability | Metso argues a hearing colloquy showed agreement it would not bear full bond cost on reversal | Bond liability arises from the district court’s orders and bond terms; no contract or agreement altered those terms | No agreement existed; Metso was liable for its pro rata share (100%) because it recovered nothing |
| Whether the district court abused discretion in correcting the judgment under Fed. R. Civ. P. 60(a) to add $100,000 | The $100K addition was not a clerical mistake and thus not correctable under Rule 60(a) | The omission of the additional $100K was a clerical oversight; correction reflects the court’s contemporaneous intent | No abuse of discretion; correction under Rule 60(a) was proper to reflect oversight |
| Whether Powerscreen failed to mitigate bond costs | Metso contends Powerscreen did not mitigate damages for bond premium | Powerscreen sought release and promptly sought reimbursement once mandate issued | Court found no merit to Metso’s mitigation argument |
Key Cases Cited
- Metso Minerals, Inc. v. Powerscreen Int’l Distribution, Ltd., 526 F. App’x 988 (Fed. Cir. 2013) (reversing infringement and directing "no costs" on appeal)
- TecSec, Inc. v. Int’l Bus. Machs. Corp., 731 F.3d 1336 (Fed. Cir. 2013) (mandate-interpretation standard cited)
- Laitram Corp. v. NEC Corp., 115 F.3d 947 (Fed. Cir. 1997) (issues not presented on appeal are outside mandate)
- Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379 (Fed. Cir. 1999) (scope of mandate coterminous with issues presented)
- Sprague v. Ticonic Nat’l Bank, 307 U.S. 161 (U.S. 1939) (mandate and scope principles)
- Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475 (Fed. Cir. 1998) (mandate does not encompass issues not presented)
- Cnty. of Suffolk v. Stone & Webster Eng’g Corp., 106 F.3d 1112 (2d Cir. 1997) (district court’s interpretation of its own order reviewed for abuse of discretion)