Filmtec Corporation v. Hydranautics
67 F.3d 931
Fed. Cir.
1996
Check Treatment

*1 time, a second ap- maintains that our court’s trial. This matter is ly, government CACI, Stone, proaching anniversary v. Inc. its tenth and Gould decision (Fed.Cir.1993), yet get hearing bars relief under the its first on the merits. held, theory recovery we delayed justice of because Justice is Reiner indeed denied. We CACI, absence of actual contract- that the trust that the Court of Federal Claims will illegal Fur- authority voids an contract. ing expedite giving Gould the trial of its issues to thermore, government maintains that which it is entitled. in Richmond bars Supreme Court’s decision VACATED AND REMANDED. recovery theory of set forth

relief under the justify do not revis- in Amdahl. These cases

iting issue we decided Gould II. the same CACI, Army entered into a contract obtaining Corporation without

with VSE delegation procurement authority

prior of

(DPA) required regulation, 41 C.F.R. as (1991). at

§ 201-20.305-1 CACI 1234-35. suspend the con- CORPORATION, In an action CACI FILMTEC tract, had CACI that because GSA Plaintiff-Appellee, authority delegated procurement to the not contract, awarding Army prior to VSE the HYDRANAUTICS, Defendant-Appellant. Army authority actual to contract had no VSE, with and therefore the contract was No. 94-1034. at countered that the void. Id. 1235. VSE Appeals, United States Court of it not contract was not void because Federal Circuit. plainly illegal required as in Reiner. Id. Reiner,

Applying forth in the standard set Oct. 1995. Army’s court concluded that the failure plain to obtain a DPA was a and clear error law, and therefore the contract was void.

Accordingly, did not overrule CACI the hold- Reiner,

ing suggested govern-

ment, merely applied but the law Reiner particular facts in that case. Richmond,

Regarding upon which the relies,

government heavily explained we why point.

above that case is beside the

Furthermore, it was before decided we is II; opinion in

sued our Gould it is not subse controlling authority.

quent Despite the

government’s failure to cite to Richmond prior appeal,

its we were aware of this case II.

when we issued our decision Gould precedent prior

We fail to see how this can refusing apply

be a basis for the law of the

ease doctrine.

The issue of whether stated a claim Gould

upon granted can which relief law the judgment

ease. The of the Court of Federal remanded, is vacated and the case is

Claims Indians, purpose Chippewa able result the second time. The tle Mountain Band 517, 520-21, (1979)) (citations finalily principle provide law-of-the-case is to F.2d omitted). Ct.Cl. 1 decisions.”) judicial (quoting United States v. Tur- *2 PLAGER, Judge. Circuit This case addresses the tension between rights patentee of a seeking remedy rights competitor seeking of a rec- *3 ompense litigation for that is claimed to be anticompetitive and violative of the antitrust laws. The district alleged court denied the infringer’s motion to amend its answer to a complaint infringement. purpose amendment was for adding a counterclaim for antitrust violations. The district court also a denied motion for resti- tution for wrongful injunc- losses caused a arising original tion out infringement of the suit. We affirm.

BACKGROUND already This court has told much of the story rather litigation tortuous of the sur rounding this Corp. invention. See FilmTec Hydranautics, v. 982 F.2d — (Fed.Cir.1992), denied, cert. -, (1993) 126 L.Ed.2d 53 (FilmTec Hydranautics); v. see also Film Inc., Corp. Allied-Signal, Tec (Fed.Cir.1991) (Film 1568, USPQ2d Allied). repeat only Tec v. We what is necessary phase understand of the litigation. Cadotte,

In an inventor named John working not-for-profit corpora- for research tion called Midwest Research Institute (MRI) government-funded project, in- on Martin, Gibson, James R. Dunn & Crutch- vented a reverse for osmosis membrane used er, CA, Angeles, plaintiff- Los for thereafter, the desalinization of water.1 Soon appellee. Gary Bernd W. Sandt and C. for-profit and Cadotte others established Cohn, Midland, Company, The Dow Chemical FilmTec, corporation, purpose com- for the MI, brief, were plaintiff-appellee. on the mercially manufacturing reverse osmosis patent on membranes. Cadotte filed for a Schwarz, McDermott, Carl Em- W. Will & membrane, assigned rights in his and all his ery, DC, Washington, argued for defendant- his invention to FilmTec. Pat- United States appellant. With him on the brief was Seth (the 4,277,344 patent) ent No. ’344 issued to D. Greenstein. Cadotte. NEWMAN, PLAGER, Hydranautics, defendant-appellant in this Before and CLEVENGER, case, competes plaintiff-appellee Film- Judges. Circuit with manufacturing selling

Tec in reverse os- Judge separate competitor Circuit NEWMAN filed a mosis membranes. Another (Allied). opinion in Allied-Signal, which she concurs in the Inc. FilmTec has sued, judgment. separately, Hydranautics Al- both (TMC) (MPD) belongs trimesoyl 1. Cadotte’s and are membrane to class of mem- chloride meta-phenylenediamine branes that contains hence known as membranes. also MPD/TMC finding light of its that Film- fringement. It is In infringement patent. ’344 lied for litigation patent, the ’344 necessary parallel Tec had title to to describe the ap- court, in order to FilmTec and litigation FilmTec and Allied in the between between litigation be- fully preliminary the course preciate reinstated Hydranautics. manufacturing FilmTec and mem- barring tween Allied from patent. Both branes covered the ’344 first, in against Allied FilmTec filed suit appealed to this Hydranautics and Allied in the District filed April 1988. The court. Delaware, alleged for the District Court infringed the ’344 that Allied’s membranes appeal April while its case was on injunctive relief. sought FilmTec here, sepa- in the district court Allied filed subsequently transferred The suit was FilmTec, against alleging anti- complaint rate *4 District of District Court for the Southern violations, specifically that FilmTec was trust answer, challenged In Allied its California. patent system to mo- fraudulently using the patent. The ownership of the ’344 FilmTee’s nopolize the market for such membranes. injunction preliminary court issued a district antitrust also moved to consolidate its Allied producing alleged- ordering stop Allied to its patent infringe- pending the still claim with ly infringing products pending the outcome it, or, against in the alterna- litigation ment litigation. tive, litigation its answer in that to amend preliminary injunction appealed the Allied counterclaim violations of the antitrust laws. July court. In 1991 this court vacated to this to dismiss Allied’s anti FilmTec moved preliminary and remanded the arguing complaint, that Allied failed to trust proceedings. FilmTec v. case for further granted could be state a claim on which relief Allied, 1569, USPQ2d at 1509. 939 F.2d at FilmTec was immune from antitrust because look instructed the trial court to Our remand liability Noerr-Penning- on the basis of the ownership question further at the of whether R.R. ton doctrine. See Eastern Presidents in Cadotte. The of the invention ever Inc., Freight, v. Noerr Motor U.S. Conf. answer to this turned on whether (1961) 5 L.Ed.2d 464 81 S.Ct. FilmTec, Cadotte, assignee had ac- (Noerr); United Mine Workers America key quired any rights patent, in the ’344 Pennington, preliminary in to a factor its entitlement (1965) (Pennington). In Au 14 L.Ed.2d 626 injunction. court denied FilmTec’s gust 1992 the district Meanwhile, shortly May in after the claims, antitrust and motion to dismiss the in- preliminary had its District Court issued motion to consolidate the granted Allied’s Allied, junction Hydra- against FilmTec sued infringement litigations antitrust and California, in nautics the Southern District of dispute between FilmTec and Allied. The Hydranautics’ alleging that membrane also FilmTec and Allied was concluded between infringed patent. This case was the ’344 by eventually further without involvement placed judge before the same who was re- this court. Film- sponsible proceedings for the between by Hydranautics appeal taken judge Tec and Allied. The bifurcated August decision of 1991 was the adverse liability damages, trial of the issues of by 1992. decided this court December May a bench trial on 1991 conducted Hydranautics, 982 F.2d FilmTec v. defense, liability part issues. As of its held, for reasons related 1283. We Hydranautics, challenged as did employment at the time the to Cadotte’s patent was whether FilmTec’s title to the light gov- invention was conceived and fatally defective. statute, erning federal that title to the inven- August having In now before it our always had been the United tion was and litigation, remand in the Allied States, was without stand- and that FilmTec Hydranautics that court in the case held ing on the ’344 to sue good patent, to the ’344 FilmTec had title attempted to Al- enjoined Hydranautics then follow Hydranautics from commercial countersuing strategy in for antitrust activity might infringe or induce in- lied’s party’s pleading Hydranauties filed amend the once as matter March 1993 violations. against an antitrust suit any court responsive in the district of course at time before a tracked that Hydranauties’ claim FilmTee. pleading party may is served. “Otherwise following Al- by Again Allied. earlier filed party’s pleading only by amend the leave of in the strategy, Hydranauties moved lied’s by or consent written of the adverse its answer for leave amend alternative party; freely given and leave shall be when to raise infringement litigation order 15(a). justice requires.” so Fed.R.Civ.P. (Hy- claim as counterclaim. its antitrust Determining give whether to of court leave its anti- proposal to consolidate dranautics’ requires an exercise discretion trial brought Allied be- claim with that trust court. The exercise of that discretion is of settled.) Allied and FilmTee came moot when unfettered, course not and the rule itself by moving to dismiss responded FilmTee freely given makes clear that leave shall be arguing the mo- suit and the antitrust justice requires. procedur- when so Unless a way in the of counterclaim tion to amend importantly al matter is related to an area of litigation should be denied. pending patent jurisdiction, this court’s exclusive as a matter counterclaim, regard FilmTee With judges of convenience for district we will not be argued that leave to amend should usually guided by the views of the circuit patent infringement liti- granted because regard in which the trial court sits with from suit under *5 gation was immune general procedural issues. In re Innotron doctrine, because Noerr-Pennington 1077, 3, Diagnostics, F.2d n. 800 1080 231 unduly delayed fil- Hydranauties had before 178, (Fed.Cir.1986); USPQ n. 3 regard to the 180 Panduit ing its motion to amend. With that, Co., Inc., FilmTee separate Corp. Mfg. antitrust v. All Plastic States 744 Hydranauties’ claims were (Fed.Cir.1984). since antitrust 1564, USPQ F.2d 223 465 In counterclaims, Hydranauties was compulsory case, this that is the Ninth Circuit. 13(a) bringing by Fed.R.Civ.P. from barred stage litigation. in claims at this the such Circuit, In the Ninth the denial of a pending these matters were before While motion to amend is for abuse of reviewed judge, Hydranauties filed a motion the trial Programs, Leigh discretion. Ltd. v. DCD monetary seeking for its losses restitution (9th Cir.1987) ton, 183, (Leigh 833 F.2d 186 it, injunction against during period the the ). ton The Ninth Circuit has made clear that by August court in was issued the discretion, exercising its ‘a court must “[i]n injunction wrongfully place, and for an guided by underlying purpose of the Rule enforcing prohibiting FilmTee from all for- 15—to facilitate decision on the merits rather eign patents on same invention. based ” technicalities,’ pleadings than on the or regarding foreign patents has The claim Leighton, quoting 833 F.2d at United settled, and is not further dis- since been (9th Webb, 655 F.2d Cir. States cussed. 1981). all August 1993the district court denied Hydranauties’ granted motions and Film- Ninth has articulated four Circuit motion to dismiss the antitrust claim. Tec’s brings it to the review of a trial concerns antitrust action is on The dismissal of the regarding mo court’s exercise of discretion Hydranauties appeal to the Circuit. Ninth pleading. to “These are: bad tions amend appeals to this court from the district court’s faith, delay, prejudice opposing undue in the denial of leave to amend its answer Leighton, party, futility of amendment.” infringement litigation, and of its de- 186, citing F.2d at Loehr v. Ventura motion for restitution. nial of its Dist., County Community College 743 F.2d (9th 1310, 1319 Cir.1984), Howey v. Unit DISCUSSION (9th Cir.1973). States, 1187, 1190 ed

I. The denial of leave to amend Hydranauties’ answer. Hydranauties’ mo- denying In his decision answer, judge 15(a) the trial did tion to amend its of the Rule Federal Rules may any name. provides party that a not address of these concerns Civil Procedure however, clear, long filing too he will the court’s focus waited be barred It is delay. counterclaim, Hydranautics undue The trial issue of his was on the previous patent in- judge that “the stated case. fully litigated, ap- fringement has been case Hydranautics early knew in its lawsuit spread.... has been pealed and the mandate with FilmTec of FilmTee’s 15 will not be extended without FRCP Rule right bring title to the invention and its brought a claim limit if the motion is after infringement suit was at issue. Allied through fully litigated on the merits has been had raised the issue FilmTec’s title when appeal.” July it was sued FilmTec and in party un To evaluate whether expressed court had 1991 this serious reser- amend, seeking duly delayed in we must ownership vations about FilmTec’s particular into account dilemma take ensuing patent, invention and the serious infringe in a faced a defendant enough grant trial to reverse the court’s bring wants to an antitrust ment suit who preliminary in FilmTec’s favor. test, against patentee. The basic claim FilmTec v. 939 F.2d at below, explained to be with refinements USPQ2d at 1509. patentee’s infringement action whether the hand, On the other the trial court Au- may an antitrust violation is constitute gust squarely 1991 had ruled in FilmTec’s sham, patentee’s whether the suit is a mean regarding patent, favor FilmTec’s title to the it ing whether baseless. Pro ruling and until this court reversed that Investors, Real Estate Inc. v. Co

fessional by Hydranautics December an effort — Indus., Inc., U.S. -, lumbia Pictures an antitrust add counterclaim face of that 611, USPQ2d 123 L.Ed.2d ruling might have been viewed as frivolous. (PRE) (discussed (1993) infra). Obvi Hydranautics filed motion its to add the ously, patentee if is successful in his *6 counterclaim three after months this court’s action, baseless, infringement his suit is not decision was rendered. a is not and it cannot be sham. The converse however; true, just patentee noted, the los because Hydra- As the district court denied es, immunity anti he does not lose his grounds delay. nautics motion on of undue liability. Liability trust turns on whether the assessing In whether that denial was an sham, is, that on the nature of discretion, suit is a abuse of it is instructive at to look underlying patentee’s the merits of the case. comparable the district court’s treatment Allied’s antitrust counterclaim. At the time If a defendant in its answer to the com- Allied filed its motion to add its counterclaim plaint patent infringement in a a suit includes April in against the suit it had been violation, counterclaim for antitrust that court, pending since 1988. The district in pleading being runs without the risk sub- remand, response July to our ruled validity stantial basis in law or fact. The August ques- 1991 in favor of FilmTec on the patent, including the the manner which the ownership Despite tion of patent application prosecuted, was will bear that, the district denied FilmTec’s mo- directly question pat- on the of whether the tion to dismiss Allied’s antitrust counterclaim entee’s suit is a sham under the relevant when FilmTec filed its motion to dismiss in necessary legal though Even the facts test. August 1992. may typically for that assessment not be litigation, known until into the that still well why It is difficult to see a at does not eliminate the counterclaimant’s re- appeared might time when it that FilmTec be sponsibilities under Rule 11 and other rules infringement in its winner should be judicial process. related to abuse of the properly considered to have filed its claim However, sham, Hydra- if the defendant files his answer that FilmTec’s suit was a while 1993, following ruling and does not include an antitrust counter- nautics this court’s claim, only good grounds patent, and learns later of that FilmTec could not sue on its is counterclaim, judge’s Hydranau- for such a he runs into the not. The trial view that timing long by waiting too problem. If he is deemed to have tics waited until this appeal litigation an- from suit under on had been the antitrust laws if court’s decision litigation Supreme is a “sham.” The inappropriate here. Until nounced seems decided, recognized in Noerr that if question of Court an action appeal was “ostensibly gov- directed influencing toward FilmTec’s suit could be deemed whether action, ernmental is a sham mere to cover practical purposes all foreclos- was for sham actually nothing what is more than an at- judge’s ruling in FilmTec’s ed the trial tempt directly to interfere with the business favor. relationships competitor appli- of a [then] matter, dispose of the That does not justi- cation of the Sherman Act would be judge’s trial stated Even if the however. Noerr, fied.” 365 U.S. at at S.Ct. an grounds denying for the motion to add Transport, 533. See also 404 U.S. California insufficient, it is antitrust counterclaim 511-16, (remanding at at 612-15 S.Ct. judgment if duty to sustain the there court’s exception determination of whether the sham up which it can grounds upon are other immunity general from the antitrust argues circum held. FilmTec W applied). laws case, Hydranautics’ motion to stances of this is whether or not So futile. FilmTec con amend its answer was infringement litigation FilmTec’s could be Hydranautics’ proposed suit under tends that Supreme characterized as a sham. The not have succeeded the antitrust laws could recently provided Court two-tiered def litigation im FilmTec’s because litigation. inition sham of law. Film- mune from suit as a matter First, the lawsuit must be base- explanation. argument requires Tec’s in the litigant less sense no reasonable general, In an effort to influence the realistically expect could success on the government power, even for the exercise of objective If litigant merits. an could con- purpose gaining anticompetitive an advan reasonably clude that the suit is calculated tage, liability under the anti does not create outcome, to elicit a favorable the suit is Noerr, Supreme trust laws. Court Noerr, under an immunized antitrust liability a combi held immune from antitrust premised exception claim on the sham freight nation of rail interests which was must fail. passed legislation to have formed order PRE, - U.S. at -, at grant of the combi that would the members (footnote omitted). USPQ2d at 1646 truck competitive advantage over nation *7 tier, “only challenged if second to be reached 145, Noerr, at 365 at 81 S.Ct. 533. ers. U.S. meritless,” id., litigation is is broadly: Supreme The Court has read Noerr the baseless lawsuit conceals an “whether a con “Noerr shields from the Sherman Act attempt directly to interfere with the busi public re certed effort to influence officials competitor through relationships ness of a purpose.” Pennington, gardless of intent or governmental process op the use of the —as at 381 U.S. at 85 S.Ct. 1593. “Joint process posed to the outcome of that an—as public officials do not efforts to influence —Id., anticompetitive weapon.” at U.S. though antitrust laws even intend violate the -, 1928, USPQ2d at 26 at 1646 113 S.Ct. competition.” Id. The Su ed to eliminate (citations omitted). (emphasis original) the Noerr-Pen preme applied Court has question Film- The first is thus whether nington and administrative doctrine courts objective- patent infringement was Tec’s suit Transport agencies. Motor Co. v. California ly The actual outcome of that baseless. 510-11, Unlimited, 92 Trucking 404 U.S. instructive, although is not determinative: (1972) (Cal 609, 611-12, 642 30 L.Ed.2d hearing claim must “The court the antitrust Noerr-Pennington Transport). The ifornia objective of the make its own assessment attempt protects those who doctrine thus predicate of the suit....” Boulware merits government organs, includ power use the of Resources, Dep’t Human 960 v. Nevada of judiciary, private ends. ing the to further (9th Cir.1992) (Boulware). F.2d 799 ultimately prevailed in in- Had FilmTec its important exception: is an the There suit, Hydranautics would have a protect fringement Noerr-Pennington doctrine does not Hydranau Subsequently, in FilmTec v. establishing that FilmTec’s suit time difficult tics, enjoy would therefore a sham. FilmTec was immunity, if

Noerr-Pennington squarely ques even its sole the court was confronted with bringing monopolization purpose in suit ’344 tion of whether FilmTec had title the —PRE, contract, at - n. market. See U.S. patent. of statute and As matter USPQ2d at 1646 at n. concluded that if the invention was con we lost, complicates MRI, which n. But FilmTec 5. Film ceived while Cadotte was at then analysis. the Only if Tec not have title. Cadotte con did the after he left MRI could ceived membrane hand, Supreme has the Court On the one FilmTec’s title be sound. Thus the issue antitrust defendant that “when the cautioned before the court was “whether the invention underlying litigation, a court has lost patent of the ’344 was made or conceived temptation to the understandable must resist ” Id., was at MRI.... while Cadotte by concluding post reasoning engage hoc 1550, USPQ2d at at 1287. F.2d action must ultimately unsuccessful that an founda- unreasonable or without have liben MRI, While he was at Cadotte had discov- omitted). (citations On the other tion.” Id. ered a reverse osmosis membrane with es- hand, preliminary success on the merits sentially composition the same chemical as necessarily preclude court from not does MRI, patent. that claimed the ’344 At concluding litigation was baseless. See however, performance of Cadotte’s re- Boulware, 960 F.2d at 798-99. osmosis differed verse membrane somewhat facts of this case have been The performance ultimately from the Cadotte by prior litigations, and are established patent. in the ’344 claimed FilmTec of Because there is therefore law the case. in performance that this difference made the facts, question dispute no over the MRI invention membrane different action is reason whether or not a cause of that covered the ’344 This court process an abuse of is a able or disagreed: plain language we held that the —PRE, at -, 113 S.Ct. at law. See rights assigned statute and contract all (“Where, here, 1930, USPQ2d at 1647 govern- at MRI to the inventions conceived predicate dispute there is no over the facts ment, and Cadotte had conceived the mem- may underlying legal proceeding, a court brane while he was at MRI. law.”) probable a matter of decide cause as noted, Supreme As Court has forbid (citations omitted). questions We review equate den us to loss on the merits with without deference to the trial forum. law objective unreasonableness. Court re noted, litigation history of As quires inquiry an into the reasonableness of long. con the ’344 This litigation antitrust defendant’s when sidered title to the on two occasions. litigation filed. must constitute the “[S]ham ease, appealed In the first Allied pursuit of claims so baseless that no reason injunction. grant preliminary of a court’s *8 litigant realistically expect able could se record, Due to the state of the we confessed —— PRE, cure favorable relief.” U.S. at legal do not know who held title to that “we -, 1929, USPQ2d 113 S.Ct. at 26 at 1647. patent application”. and to the invention Conversely, probable “[t]he existence of 1573, at FilmTec v. 939 F.2d 19 legal precludes proceedings cause to institute Nonetheless, USPQ2d at 1512. we made it finding that an antitrust defendant has known, question that we had “a serious about engaged litigation.” sham Id. title, any, if the nature of the FilmTec.” Id., 1571-72, 19 USPQ2d Although at at 1511. is not without 939 F.2d some us, doubt, that, Confronting only taking the issue then before we we conclude all of the account, our view of the title facts and circumstances into it can- “[i]n concluded issue, against Hy- it cannot be said on this record that not be said that FilmTec’s suit FilmTec has established a reasonable likeli dranautics was baseless. The is- Id., litigation hinged, precisely hood of success on the merits.” 939 F.2d sues on which this invented, when, 1574, USPQ2d gen- 19 at 1513. what Cadotte were

939 States, understanding the basis of its of more & Ohio R.R. v. United 279 uine. On U.S. FilmTee, reason, issues, 781, 785-86, 492, 493, not without those 73 L.Ed. 954 (1929); owning patent Maryland the ’344 Dep’t staked a claim Human Re judge, assignee. The trial after Dep’t Agricul Cadotte’s sources v. United States consideration, ture, (4th FilmTee on this full ruled for 976 F.2d n. 1482-83 & 19 controlling, Although Cir.1992); that is not issue. Kidney National Patients Ass’n erroneous, (D.C.Cir. it it Sullivan, indeed we found to be does v. 958 F.2d 1136-37 theory support 1992); the conclusion that FilmTec’s Co., accord Iconco v. Jensen Constr. light, In this and in (8th was more than sham. Cir.1980); Connelly 622 F.2d 1291 Con case, transpired in of all that has tainers, view Bernard, F.Supp. Inc. v. 717 Hydranautics allowing to amend its answer (S.D.N.Y.1989). 210 But Greenwood cf. by adding antitrust counterclaim would be an Co., County v. Duke Power 107 F.2d act; the decision of the trial court a futile (4th Cir.1939), denied, 487-88 cert. 309 U.S. denying the motion to amend is affirmed.2 667, (1940); S.Ct. L.Ed. 1014 Service, Tropic-Aire, Inc. United Motors v. II. Restitution. Inc., 479, 483-84, USPQ merits, Hy- (8th Cir.1932). After its final success on the awarding moved for an order res- dranautics ground Nor would the the second injunction. Hydra- wrongful for the titution cited —that FilmTee was the owner of nauties that FilmTee had been un- patent support the ’344 a denial of a restitu — justly by injunction prohib- enriched tionary remedy. The district court consid Hydranautics making from ited reverse os- ered that FilmTee owned the ’344 mosis membranes. The district court found court, court, reversing until this the district restitution to be unavailable for three rea- held that pat the United States owned the First, Hydranautics sons. transferred no regard ent. That is not correct. With to the property pursuant injunc- to FilmTee patent in possessed any FilmTee never Second, that, tion. the district court stated rights in the ’344 that were enforce otherwise, until this court held FilmTee was against Hydranautics. able As this court considered to the owner of the ’344 held, previously Third, was of the view that when the invention was conceived Ca- Hydranautics not due restitution for dotte, immediately title to that invention during whatever losses it business suffered operation vested the United States injunction, pendency since these right assign law. He had no it to Film- damages. properly were more considered as Tec; the statute had divested him of all of Hydranautics’ The district court denied mo- his interest. restitution, Hydranautics ap- tion for Hydranautics, FilmTec v. 982 F.2d at peals. at 1290. assume, deciding, without We that the first ground ground cited the district court would not The district court’s third law, prevent litigant, denying Hydranautics as a matter of restitution was that showing recovering upon proper requisite restitution show- had not made the for such recovery, Hydranautics effectively ing. Arkadelphia Milling See and that Co. St. Co., 134, 145, Ry. sought damages alleged Louis S.W. for its loss of busi 237, 241-42, (1919); 63 L.Ed. 517 Balti- ness to FilmTee while the was in *9 Thus, 247, (1965). light USPQ holding 2. of our that FilmTec’s L.Ed.2d 147 404 we baseless, infringement again determining suit was not avoid what effect PRE has had progeny. we need not and its See Carroll decide whether FilmTec’s suit was on Walker Process Touch, Inc., Sys., 15 in bad faith or otherwise motivated anticom Inc. v. Electro Mechanical Ltd., 1573, 10, 1836, petitive Corp. intent. See Loctite v. Ultraseal F.3d 1583 n. 27 1845 n. Kobak, 861, (Fed.Cir.1985). (Fed.Cir.1993); USPQ James B. Jr. 781 F.2d 228 90 Nor 10 “Profes- Noerr-Pennington the Future of need we decide whether im sional Real Estate Investors and munity Litigation: Walker Process and is vitiated fraud on the office. Patent-Antitrust Equip., Handgards Noerr-Pennington," Antitrust See Walker Inc. Machin Meet 63 Process v. Food 347, (1994). ery Corp., & Chem. 382 U.S. 86 S.Ct. 15 L.J. 185 940 Dep’t v. Maryland Human Resources recognized that the viz. district court

place. The of Dep’t Agriculture, 976 F.2d for United States is not a substitute remedy of restitution of (4th Cir.1992) Kidney Pa and National 1462 concluded that damages, in and an action Sullivan, 1127 Ass’n v. tients in this case based was unavailable restitution — denied, -, (D.C.Cir.1992), cert. familiarity with the evi- on the court’s broad 966, 122 (1993), 122 L.Ed.2d are not 113 S.Ct. Hydranauties and Allied in dence both dictum, authority, recovery of even for including evidence concern- Signal litigation, resulting damages nature of losses of the parties’ products and ing of the the nature Moreover, at trial. although from the decision for them. the market stay of Hydranauties was denied remedy for Restitution is standard court, Hydra- by the district pending appeal for of breach of contract and the return stay before this pursue not nautics did paid. The dis specific property and monies Fed.R.App.P. 62(g); court. Fed.R.Civ.P. See correctly Hydranauties’ trict court held that circumstances, 8(a)-(b). and on these Under during period losses between business us, say cannot that the the record before we directly appeal are not recoverable trial and disallowing clearly erred in res- district court indirectly damages as and thus are not recov therefore affirm the titution this ease. We guise This im erable of restitution. Hydranauties’ Mo- district court’s denial rule, longstanding plements the as stated in tion for Restitution. Farley, v. 105 U.S. 26 L.Ed. Russell (1881), no bond or under “[w]here CONCLUSION taking required, it is clear that the has been power damages to award sus court no court that denied The order of the district party consequence tained either Hydranauties to amend its answer to leave except by making litigation, such a decree laws, and of the antitrust assert violations may reference to the costs of the suit as it Restitution, for Hydranauties’ denied Motion just.” equitable deem and See Restatement is affirmed. (1937) § 74 a. of Restitution and Comment AFFIRMED policy legiti practice This reflects the activity upon judg favorable mate business NEWMAN, Judge, concurring in Circuit wrong. put ment is not a As Lord Mansfield judgment. it, money paid by “lies for mis restitution take; upon happens a consideration which I of the district or concur in the affirmance fail; money got through imposition or judgment, although I do not share the for court’s extortion; op majority’s reasoning. (express implied); or or or pression; advantage or an undue taken of restitution, On the issue of situation, contrary plaintiffs to the laws correctly observed that there was no protection persons under made for the Hydra money property or transfer McFerlan, those circumstances.” Moses v. judgment to FilmTee after the nauties (K.B.1760), Eng.Rep. cited in FilmTee, Hydranauties’ favor of and that re Epstein, Ubiquity Richard A. The quested recovery simply request for Principle, 67 S.Cal.L.Rev. Benefit damages during period between trial and (1994). & n. 6 damages appeal. unavailability period practice holding, longstanding reflects I would affirm the district court’s error, policy. utility ground of of clear The railroad and rate cases not on the absence understanding overcharges but a matter of correct wherein were restored customers, Arkadelphia Milling application viz. v. of the law. Co. Co., Ry.

St Louis S.W. 249 U.S. (1919)

237, 63 L.Ed. Baltimore & States, Ry.

Ohio 279 U.S. Co. United (1929), L.Ed. 954 and cases government agencies

wherein recovered

overpayments regulation, based on statute or