Is That a Rule 54(b) “Final Judgment”? A Stark Contrast Between Disposing All and Less Than All Asserted Claims of a Patent

PARKERVISION, INC. v. QUALCOMM INCORPORATED

Before Prost, Chen, and Stark. Appeal from the United States District Court for the Middle District of Florida.

Summary: Since infringement of a patent is a single cause of action, a judgment that does not address all of the still-asserted claims of a patent is not a “final judgment” for Rule 54(b) purposes.

ParkerVision, Inc. sued Qualcomm for infringement of the ’940 patent.  Following the district court’s claim construction, the parties stipulated to non-infringement of certain asserted claims.  At the parties’ request, the district court granted partial summary judgment of non-infringement of those claims and, on ParkerVision’s motion, entered “final judgment” under Federal Rule of Civil Procedure 54(b) as to those claims.  ParkerVision appealed the grant of summary judgment of non-infringement.

The Federal Circuit explained that the appealed, so-called “final judgment” was not a “final judgment” within the meaning of Rule 54(b).  The term “claim” as used in Rule 54(b), the panel explained, refers to a cause of action, not to an individual patent claim.   The cause of action for patent infringement is created by 35 U.S.C. § 281, which defines infringement of a patent—not an individual patent claim.  “Because infringement of the [appealed] claims of the ’940 patent is not a separate cause of action,” the panel reasoned, “Rule 54(b) does not allow entry of partial final judgment, as the cause of action is not final.” Accordingly, the Federal Circuit dismissed the appeal for lack of jurisdiction.

Editor: Sean Murray