Today, June 14, 2013, in Robert Bosch LLC v. Pylon Manufacturing Corp., No. 2011-1363, 1364, an en banc Federal Circuit ruled that parties can appeal a decision on liability in patent infringement cases before there has been a trial on damages or willfulness.
Under 28 U.S.C. § 1292(c), the Federal Circuit has exclusive jurisdiction “of an appeal from a judgment in a civil action for patent infringement which … is final except for an accounting.” The issues presented were whether, in a case where infringement liability is bifurcated from damages and willfulness, the Federal Circuit has jurisdiction to hear an appeal from the liability phase while damages and willfulness have yet to be tried — essentially, “what is an accounting?”
The court analyzed the history of an accounting, finding that the high cost of an accounting was relevant to the decision (before the merger of law and equity) to allow for appeal before an accounting. The court found that reasoning relevant today. “Modern patent damages trials, with their attendant discovery, are notoriously complex and expensive.” The court thus found that an accounting included a determination of damages.
The majority also found that a determination of willfulness fell within the definition of an accounting, citing historical cases and the appellant’s failure to cite cases that show , in enacting § 1292(c), Congress “intended to disturb the practice of determining willfulness as part of an accounting.”
The Federal Circuit further stated “we wish to make clear that district courts, in their discretion, may bifurcate willfulness and damages issues from liability issues in any given case [and] have the authority to try these issues together or separately.”
Judges Moore and Reyna dissented from the court’s finding that willfulness was part of an accounting. Judges O’Malley and Wallach dissented from the court’s ruling as to both damages and willfulness.