Imprenta Services, Inc. v. Karll

• Court: Court of Appeals for the Federal Circuit
• Decided: January 30, 2023
• Docket: 22-2122
• Status: Unpublished

Opinion

Case: 22-2122 Document: 21 Page: 1 Filed: 01/30/2023

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

IMPRENTA SERVICES, INC., MIKE SANCHEZ, Plaintiffs-Appellants

v.

NICHOLAS PATRICK KARLL, ECO PACKAGING SOLUTIONS, Defendants-Appellees ______________________

2022-2122 ______________________

Appeal from the United States District Court for the Central District of California in No. 2:20-cv-06177-GW- PVC, Judge George H. Wu. ______________________

ON MOTION ______________________

Before TARANTO, MAYER, and STOLL, Circuit Judges. TARANTO, Circuit Judge. ORDER Nicholas Patrick Karll and Eco Packaging Solutions (collectively, “Eco”) move to dismiss this appeal for lack of jurisdiction. Imprenta Services, Inc. and Mike Sanchez (collectively, “Imprenta”) oppose dismissal. Case: 22-2122 Document: 21 Page: 2 Filed: 01/30/2023

Imprenta filed this action in the United States District Court for the Central District of California for declaratory judgment of non-infringement of Eco’s patent, declaratory judgment of inequitable conduct, and to correct inventor- ship. Eco asserted a counterclaim for patent infringement and state law counterclaims for breach of contract and breach of warranty. Eco also sought to enjoin future patent infringement by Imprenta. The district court granted Eco’s motions for summary judgment of correct inventorship, no inequitable conduct, and willful patent infringement. The court also granted- in-part Eco’s motion for sanctions. The court subsequently entered an order setting the sanctions amount while defer- ring a ruling on infringement damages and enhanced dam- ages. Imprenta filed a notice of appeal seeking review of those decisions, as well as orders on evidentiary objections and claim constructions. ECF No. 1-2 at 2–3. Our jurisdiction generally extends only to a “final deci- sion of a district court,” 28 U.S.C. § 1295(a)(1), i.e., one that “ends the litigation on the merits and leaves nothing for the court to do but to execute the judgment,” Catlin v. United States, 324 U.S. 229, 233 (1945). That is not the situation here. The court decisions from which Imprenta attempts to appeal did not end the litigation, as it is undisputed that, among other things, the district court has not reached a fi- nal decision on the state law claims. See Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1362 (Fed. Cir. 2003) (“A judgment that does not dispose of pending coun- terclaims is not a final judgment.” (citation omitted)). Imprenta suggests that this matter is “final except for an accounting” pursuant to 28 U.S.C. § 1292(c). But that narrow exception to the final judgment rule does not apply here, at least because Eco’s request for injunctive relief re- garding patent infringement remains pending. See Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 737 (1976) (no final deci- sion when injunction request is outstanding); Johannsen v. Case: 22-2122 Document: 21 Page: 3 Filed: 01/30/2023

IMPRENTA SERVICES, INC. v. KARLL 3

Pay Less Drug Stores Nw., Inc., 918 F.2d 160, 164 (Fed. Cir. 1990) (noting that district court ruling that did not adjudi- cate motion for injunctive relief, inter alia, is not final ex- cept for an accounting). Accordingly, IT IS ORDERED THAT: (1) The motion is granted to the extent that the appeal is dismissed for lack of jurisdiction, subject, however, to re- instatement under the same docket number without the payment of an additional filing fee if, within 60 days of this order, Imprenta appeals from the entry of a final judgment appealable under either 28 U.S.C. § 1292(c) or § 1295(a)(1) or from a judgment entered under Rule 54(b) of the Federal Rules of Civil Procedure. (2) Each side shall bear its own costs. FOR THE COURT

January 30, 2023 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court

ISSUED AS A MANDATE: January 30, 2023