MEMORANDUM OPINION AND ORDER FOR ENTRY OF JUDGMENT PURSUANT TO RULE 54(b)
TABLE OF CONTENTS
I. INTRODUCTION AND BACKGROUND........................527
A. The Claims And Counter-
claims .......................527
B. Rulings On Dispositive Mo-
tions ........................528
II. LEGAL ANALYSIS.................530
A. Language And Purpose Of
Rule 51(b) ...................530
B. Requirements Of The Rule.......531
1. Finality........._..........531
2. No just reason for delay ... .532
C. Effect Of Rule 51(b) Certifica-
tion .........................532
D. Certification Here...............533
1. Finality ...................533
2. No just reason for delay ... .535
III. CONCLUSION .....................535
In light of decisions dismissing or entering summary judgment on all of the federal claims presented in this lawsuit, the court will consider the appropriateness of entering judgment on some, but not all, claims pursuant to Rule 54(b) of the Federal Rules of Civil Procedure. Because the claims on which such judgment may be entered in this case are patent or patent-related claims, the court will look to decisions of the Federal Circuit Court of Appeals for guidance on the requirements for entry of judgment pursuant to Rule 54(b).
I. INTRODUCTION AND BACKGROUND
A. The Claims And Counterclaims
The parties to this lawsuit are both makers of tow bars used to tow an automobile behind a recreational vehicle (R.V.). The principal claims and counterclaims in this lawsuit originally concerned infringement, validity, and enforceability of the parties’ patents for such tow bars. Dethmers’s complaint, as amended, included the following ten claims: Count I for declaratory judgment of non-infringe
Automatic’s counterclaims originally consisted of the following: Count I for declaratory judgment that Dethmers’s original ’240 patent and its Re482 patent are invalid, unenforceable, and not infringed by Automatic’s products; Count II for “false advertising” in violation of the Lanham Act, 15 U.S.C. § 1125(a); Count III for “false marking” in violation of 35 U.S.C. § 292; Count IV for infringement of Automatic’s ’166 patent; and Count V for declaratory judgment of non-infringement, invalidity, and unenforceability of Dethmers’s United States Patent No. 5,765,851 (the Parent patent or the ’851 patent).
B. Rulings On Dispositive Motions
As a result of this court’s rulings on summary judgment motions, see Dethmers Mfg. Co., Inc. v. Automatic Equip. Mfg. Co.,
Specifically, in Dethmers I, the court ruled as follows:
1. Automatic’s December 5, 1997, motion to dismiss or in the alternative for partial summary judgment, for more definite statement, and to strike is granted as to summary judgment on all prayers for punitive damages on state-law claims, but otherwise denied.
2. Automatic’s March 11, 1998, motion for summary judgment on the invalidity of the Re482 patent is denied as to insufficiency of “errors,” and assertion that the reissue patent is not for the “same invention” as the original ’240 patent, but granted as to the inadequacy of the reissue declaration, on the ground that it does not comply with the detail required by the decisions of the Federal Circuit Court of Appeals in Nupla [Corp. v. IXL Mfg. Co., Inc.,114 F.3d 191 (Fed.Cir.1997),] and [In re] Constant, [827 F.2d 728 (Fed.Cir.1987), cert. denied,484 U.S. 894 ,108 S.Ct. 251 ,98 L.Ed.2d 209 (1987),] and the former version of 37 C.F.R. § 1.175, and the Re482 patent is hereby declared invalid.
3. Dethmers’s June 2, 1998, motion for summary judgment or in the alternative partial summary judgment on patent invalidity, unenforceability, and non-infringement is denied in its entirety.
Dethmers I,
In Dethmers II, the court ruled as follows:
*529 That portion of Dethmers’s June 16, 1999, Motion for Summary Judgment and to Dismiss for Lack of Controversy asserting that there is no present controversy between Automatic and Dethmers regarding the ’851 patent is granted. The court concludes that it does not have subject matter jurisdiction over Count V of Automatic’s counterclaim concerning non-infringement, unenforceability, and invalidity of the ’851 patent, because Automatic has failed to establish either prong of the “actual controversy” requirement for such a claim. Furthermore, Automatic’s June 15, 1999, Motion for Summary Judgment of Invalidity of U.S. Patent No. 5,765,851 is denied for lack of subject matter jurisdiction and Count V of Automatic’s counterclaim is dismissed.
Next, that portion of Dethmers’s June 16, 1999, Motion for Summary Judgment and to Dismiss for Lack of Controversy asserting that Dethmers is entitled to summary judgment on both its claim of non-infringement and Automatic’s claim of infringement of the ’166 patent is granted. In light of an unrebutted Wamer-Jenkinson presumption as to either of the two elements of the ’166 patent at issue here, the court must conclude that prosecution history estoppel bars the application of the doctrine of equivalents as to those elements and the court has previously determined that Dethmers’s accused devices do not literally infringe the ’166 patent. See Dethmers [I],23 F.Supp.2d at 1037 & 1039. Summary judgment in Dethmers’s favor is therefore granted on Count I of Dethmers’s Third Amended and Substituted Complaint and on Count IV of Automatic’s Counterclaim.
That portion of Dethmers’s June 16, 1999, Motion for Summary Judgment and to Dismiss for Lack of Controversy seeking summary judgment on Automatic’s counterclaim of “false advertising” is granted. Automatic has failed to generate a genuine issue of material fact on the element of “injury” on that portion of its “false advertising” claim premised on the “patented flex joint” representation, and has not properly requested that the court hold disposition of the motion for summary judgment in abeyance pending further discovery on that issue pursuant to Rule 56(f). On that portion of the “false advertising” claim premised on “infringement” representations, the evidence does not indicate the specific content or context of the statements such that no genuine issue of material fact is generated that the statements were statements of fact in commercial advertising or promotion about Automatic’s goods or services. Summary judgment in Dethmers’s favor is therefore granted on Count II of Automatic’s Counterclaim.
Finally, that portion of Dethmers’s June 16, 1999, Motion for Summary Judgment and to Dismiss for Lack of Controversy seeking summary judgment on Automatic’s counterclaim of “false marking” is granted. Automatic has failed to generate a genuine issue of material fact as to the “intent to deceive” element of such a claim. Summary judgment in Dethmers’s favor is therefore granted on Count III of Automatic’s Counterclaim.
Dethmers I,
Dethmers notified the court shortly before the trial set to begin on October 18, 1999, that it was voluntarily dismissing five of its eight remaining state-law claims. Thus, the only claims remaining in this action are Dethmers’s claims of breach of contract, unjust enrichment, and promissory estoppel. The court determined in its ruling on the first round of summary judgment motions that, in this diversity action, these claims are governed by Nebraska law. See Dethmers I,
Trial in this matter has been continued so that the court and the parties can consider the propriety of entry of final judgment pursuant to Rule 54(b) on the various claims the court has dismissed or on which the court has entered summary judgment (but not on claims voluntarily dismissed) and the propriety of certifying certain questions of state law on the remaining claims to the Nebraska Supreme Court. This ruling represents the disposition of the first of those considerations, the entry of final judgment pursuant to Rule 54(b), on some, but not all, of the claims in this action.
II. LEGAL ANALYSIS A. Language And Purpose Of Rule 54(b)
Ordinarily, “[i]n a case involving more than one claim, there is no final decision until a judgment is entered adjudicating all of the claims.” Spraytex, Inc. v. T)JS & T,
(b) Judgment Upon Multiple Claims or Involving Multiple Parties. When more than one claim for relief is presented in an action, whether as a claim, counterclaim, cross-claim, or third-party claim, or when multiple parties are involved, the court may direct the entry of a final judgment as to one or more but fewer than all of the claims or parties only upon an express determination that there is no just reason for delay and upon an express direction for the entry of judgment. In the absence of such determination and direction, any order or other form of decision, however designated, which adjudicates fewer than all the claims or the rights and liabilities of fewer than all the parties shall not terminate the action as to any of the claims or parties, and the order or other form of decision is subject to revision at any time before the entry of judgment adjudicating all the claims and the rights and liabilities of all the parties.
Fed.R.Civ.P. 54(b). Thus, as the Federal Circuit Court of Appeals has recognized,
Rule 54(b) requires clear and unmistakable direction by the district court before appeal may be taken on less than all claims in a case. In doing so, the court must make an express statement of finality and indicate the lack of a just reason for delay. W.L. Gore & Assocs., Inc. v. International Medical Prosthetics Research Assocs., Inc.,975 F.2d 858 , 24 USPQ2d 1195 (Fed. Cir.1992).
Spraytex, Inc.,
The Federal Circuit Court of Appeals has explained that the purpose of the “finality” and “no just reason for delay” requirements is to balance “[t]he need for immediate appeal and the policy against piecemeal review.” Spraytex, Inc.,
We review de novo a district court’s determination whether a judgment is final with*531 respect' to one or more claims, while the determination that there was no just reason for delay is reviewed under an abuse of discretion standard. [W.L. Gore & Assocs., Inc., 975 F.2d] at 862, 24 USPQ2d at 1198; see also Houston Indus., Inc. v. United States,78 F.3d 564 , 567 (Fed.Cir. 1996).
Spraytex, Inc.,
B. Requirements Of The Rule 1. Finality
“In order for Rule 54(b) to apply, the judgment must be final with respect to one or more claims.” W.L. Gore,
The Federal Circuit Court of Appeals has explained that “[a] judgment is final for Rule 54(b) purposes when it is ‘an ultimate disposition of an individual claim entered in the course of a multiple claims action.’ ” Houston Indus., Inc., 78 F.3d at 567 (quoting Sears, Roebuck & Co. v. Mackey,
In Houston Industries, the Federal Circuit Court of Appeals rejected the argument that “an issue constitutes a Rule 54(b) claim if the facts and legal theory underlying the issue are distinct from the facts and legal theories underlying the remaining unresolved issues.” Houston Indus., Inc., 78 F.3d at 567. The court explained:
[This] argument is not persuasive for two reasons. First, it confuses the factors underlying the trial court’s determination of whether just cause for delay exists. Second, in order for Rule 54(b) to apply, the judgment must be final with respect to one or more claims. The resolution of individual issues within a claim does not satisfy the requirements of Rule 54(b). Compare Liberty Mut. Ins. Co. v. Wetzel,424 U.S. 737 , 742-43,96 S.Ct. 1202 , 1205-06,47 L.Ed.2d 435 (1976) (entry of judgment under Rule 54(b) was not proper where district court determined issue of liability in employment discrimination claim but requests for relief, including damages, remained).
Houston Indus., Inc.,
In short, a judgment is “final” for Rule 54(b) purposes “where it ‘ends the litigation on the merits [of a claim] and leaves nothing for the court to do but execute the judgment.’” Id. (quoting Catlin v. United States,
2. No just reason for delay
As suggested in Houston Industries, an important consideration in deciding whether there is “no just reason for delay,” the second requirement for Rule 54(b) certification, Fed. R. Civ. P. 54(b), is “the separateness of the claims for relief.” Spraytex, Inc.,
The Federal Circuit Court of Appeals has explained the analysis of the “no just reason for delay” factor as follows:
In Curtiss-Wright [Corporation v. General Electric Company], the Supreme Court stated:
[I]n deciding whether there are no just reasons to delay ... [i]t was ... proper for the District Judge ... to consider such factors as whether the claims under review were separable from the others remaining to be adjudicated and whether the nature of the claims already determined was such that no appellate court would have to decide the same issues more than once even if there were subsequent appeals.
446 U.S. [1,] 8, 100 S.Ct. [1460,] 1465,
[T]he relationship of the adjudicated claims to the unadjudicated claims is one of the factors which the District Court can consider in the exercise of its discretion. If the District Court certifies a final order on a claim which arises out of the same transaction and occurrence as pending claims, and the Court of Appeals is satisfied that there has been no abuse of discretion, the order is appeal-able.
Cold Metal Process Co. v. United Eng’g & Foundry Co.,
W.L. Gore,
C. Éffect Of Rule 54(b) Certification
As noted above, the district court’s Rule 54(b) certification does not guarantee appellate review of the merits of the judgment. Instead, the appellate court first “reviews a Rule 54(b) certification to determine (1) whether the judgment is final with respect to one or more claims and (2) whether the trial court properly concluded that there was no just reason for delay.” Houston Indus., Inc.,
D. Certification Here
Again, the candidates for entry of final judgment pursuant to Rule 54(b) in this case are Counts I and II of Dethmers’s Complaint, which are claims based upon the ’166 patent and the Re482 patent, respectively, and Counts I through V of Automatic’s Counterclaim, which are claims based upon the Re482 patent, “false advertising,” “false marking,” the ’166 patent, and the ’851 patent, respectively.
1. Finality
As explained above, “[a] judgment is final for Rule 54(b) purposes when it is ‘an ultimate disposition of an individual claim entered in the course of a multiple claims action.’ ” Houston Indus., Inc.,
As to Count I of Dethmers’s Complaint and Count IV of Automatic’s Counterclaim, the decisions in Dethmers I and Dethmers II together make an “ultimate disposition” of claims related to infringement, validity, and enforceability of the T66 patent. In Dethmers I, the court determined that Dethmers’s accused devices do not literally infringe the T66 patent. Dethmers I, 23
A slightly different situation obtains as to Count II of Dethmers’s Complaint and Count I of Automatic’s Counterclaim, which address the validity, enforceability, and infringement of the Re482 patent. In Dethmers I, the court found that the reissue declaration for the Re482 patent does not comply with the detail required by the decisions of the Federal Circuit Court of Appeals in Nupla Corp. v. IXL Mfg. Co., Inc.,
Entry of final judgment is also proper as to the last of the true “patent” claims in this litigation, Count V of Automatic’s Counterclaim, which asserts non-infringement, invalidity, and unenforceability of Dethmers’s ’851 patent, on quite a different ground. The court resolved the other patent claims on their merits, but it dismissed this “cause of action” in its entirety for lack of subject matter jurisdiction. See Houston,
This brings the court to the finality of the two patent-related claims, Counts II and III of Automatic’s Counterclaim, which assert “false advertising” in violation of the Lanham Act, 15 U.S.C. § 1125(a), and “false marking” in violation of 35 U.S.C. § 292, respectively. Both claims are premised on allegedly misleading references to Dethmers’s Re482 patent, and statements asserting Automatic’s infringement of that patent, on Dethmers’s products, in its advertising literature, and in other contexts. This court concluded in Dethmers II that the “false advertising” and the “false marking” claims were both governed by the law of the Federal Circuit, because both involved the “ ‘scope of [a] patent].” ’ Dethmers II,
These conclusions concerning the “finality” of the claims under discussion lead the court to consider next whether there is “no just reason for delay” in the entry of judgment. See Fed.R.Civ.P. 54(b) (requiring both “finality” and “no just reason for delay”).
2. No just reason for delay
Whether there is “no just reason for delay” in the entry of final judgment pursuant to Rule 54(b), as noted above, depends in large part on “the separateness of the claims for relief.” Spraytex, Inc.,
The court acknowledges that there may be some factual overlap between the claims on which judgment is contemplated and the remaining state-law claims of breach of contract, promissory estoppel, and unjust enrichment, and agrees that all arise from the same transactions or occurrences. However, in its ruling on motions in limine, Dethmers Mfg. Co., Inc. v. Automatic Equip. Mfg. Co.,
Finally, the court notes that the parties and the court now contemplate certifying certain questions on the remaining claims to the Nebraska Supreme Court. Thus, it would unjustly delay entry of judgment on the patent and patent-related claims to await answers to certified questions and trial of the state-law claims. Instead, entry of judgment pursuant to Rule 54(b) on the patent and patent-related claims will make it more likely that all of the claims in this case can be tried in one proceeding — if this court’s disposition of the patent and patent-related claims does not withstand appeal — with proper guidance from the Nebraska Supreme Court and the Federal Circuit Court of Appeals and consequent economies to the parties and the court.
Therefore, the court concludes that there is no just reason for delay in the entry of judgment pursuant to Rule 54(b) on the patent and patent-related claims.
III. CONCLUSION
For the foregoing reasons, the court finds that final judgment should be entered on the patent and patent-related claims and that there is no just reason to delay the entry of such judgment. See Fed.R.Civ.P. 54(b). Therefore, final judgment pursuant to Rule 54(b) of the Federal Rules of Civil Procedure shall enter as follows:
1. Judgment shall be entered in favor of Dethmers on Count I of Dethmers’s Complaint and Count IV of Automatic’s Counter
2. Judgment shall be entered in favor of Automatic on Count II of Dethmers’s Complaint and Count I of Automatic’s Counterclaim, and the court declares that United States Patent No. Re32,482 is invalid.
3. Judgment shall be entered dismissing Count V of Automatic’s Counterclaim for lack of subject matter jurisdiction.
4. Judgment shall be entered in favor of Dethmers on Counts II and III of Automatic’s Counterclaim.
The Clerk of Court is directed to enter judgment accordingly. Notwithstanding the entry of judgment as stated above pursuant to Rule 54(b) of the Federal Rules of Civil Procedure, Counts III, VIII, and IX of Dethmers’s Complaint remain pending before this court.
IT IS SO ORDERED.
Notes
. The court subsequently denied Dethmers's motion to reconsider the decision in Dethmers I, but certified its ruling on the first set of dispositive motions for interlocutory appeal pursuant to 28 U.S.C. § 1292(b). Dethmers Mfg. Co., Inc. v. Automatic Equip. Mfg. Co., No. C 96-4061-
. Obviously, for the rule to apply, there must be more than one claim at issue, although only one such claim must be "final." See Fed R.Civ.P. 54(b); W.L. Gore,
. More specifically, these claims are appropriate candidates for Rule 54(b) certification as follows: (1) Count I of Dethmers’s Complaint, for declaratory judgment of non-infringement, invalidity, and unenforceability of Automatic’s patent, United States Patent No. 5,356,166 (the ’166 patent or the Automatic patent), because this court granted summary judgment of non-infringement of the '166 patent; (2) Count II of Dethmers’s Complaint, for damages, injunctive, and declaratory relief, arising from alleged infringement by Automatic of Dethmers’s own patent, United States Patent No. Re32,482 (the Re482 patent or the Dethmers reissue patent), which is a reissue of United States Patent No. 5,232,240 (the '240 patent or the Johnson patent), because this court granted summary judgment as to the inadequacy of the reissue declaration and therefore declared the Re482 patent invalid; (3) Count I of Automatic’s Counterclaim, because this court entered summary judgment for the same reasons summary judgment was entered on Count II of Dethmers’s Complaint; (4) Count II of Automatic’s Counterclaim, the "false advertising” claim, because the court entered summary judgment in favor of Dethmers; (5) Count III of Automatic’s Counterclaim, the "false marking” claim, because the court entered summary judgment in favor of Dethmers; (6) Count IV of Automatic’s Counterclaim, concerning the '166 patent, because the court entered summary judgment for the same reasons such judgment was entered on Count I of Dethmers's Complaint; and (6) Count V of Automatic’s Counterclaim, concerning the '851 patent, because the court dismissed the claim for lack of subject matter jurisdiction.