Enzo Biochem v. Gen-Probe (Fed. Cir. 2005).
Enzo owns a patent on nucleic acid probes that selectively hybridize to Neisseria gonorrhoeae. In an oral hearing, the district court invalidated the patent for violating the on-sale bar — holding that there were “no triable issues of fact” and granting Gen-Probe’s motion for summary judgment. The district judge then asked the parties if there were any other outstanding issues that he should rule upon, and counsel for both parties responded that the court had “covered all the issues raised.” The clerk then entered judgment under Rule 58 holding that the claims were invalid and that “the case was closed.”
On appeal, however, the CAFC refused to reach the merits — finding that the lower court had not reached a “final judgment” because Gen-Probe’s unenforceability counterclaim remained unadjudicated. The appellate panel agreed with Gen-Probe that “the district court’s belief that the judgment was final is irrelevant to whether jurisdiction is satisfied.”
Although it is true that the district court here did make a clear statement that the case was at an end, it was mistaken, because an unadjudicated counterclaim remained. Gen-Probe’s brief to this court, supported by the record, and unrefuted by Enzo, makes that clear. While it is, to say the least, regrettable that a party with a remaining counterclaim that it wishes to pursue, as well as its opponent, leaves a trial judge with the impression that no claims remain in the case, we have no choice but to take cognizance of the nonfinality created by the unquestioned existence of that counterclaim.
Case dismissed for lack of appellate jurisdiction.
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