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We wrote previously about Judge Andrews' rejection of a proposed stipulation "that dismisses three patents without prejudice so the other two can be appealed," which he said was "just allowing for what is essentially an interlocutory appeal." At that time, he asked the parties to "submit something, jointly or separately, . . . explaining why I should approve the stipulation as is, or, if the other three patents are just fluff, why the three shouldn’t be dismissed with prejudice."

The parties in Malvern Panalytical, Inc. v. TA Instruments-Waters, LLC, C.A. No. 19-2157-RGA took Judge Andrews up on his invitation: Both sides submitted letters in support of their stipulation and proposed judgment, but yesterday Judge Andrews confirmed his earlier view that the proposed judgment was an impermissible bid for an interlocutory appeal, and he declined to enter it.

As noted in our last post, the parties stipulated to non-infringement of two patents-in-suit (the Plotnikov patents) after the Court's claim construction, and stipulated to a dismissal without prejudice of three other patents-in-suit (the Broga patents). After reviewing the parties' letters, Judge Andrews concluded in yesterday's order as follows:

To my eye, the parties have simply agreed to what in substance is an interlocutory appeal. But, through the dismissal without prejudice of the Broga patents, the interlocutory appeal has been papered over to look like (and perhaps be) a final judgment.

Although the defendant had told the Court "it is confident that if the Court of Appeals affirms my claim construction, Plaintiff will not refile suit based on the Broga patents alone," Judge Andrews was dubious, and noted that the plaintiff "makes no such representation[.]" As he had done in his earlier order, where he had suggested the Broga patents might be "fluff," Judge Andrews said the plaintiff's apparent unwillingness to try to the Broga patents alone called into question the plaintiff's view of "the stand-alone litigation-worthiness of the Broga patents."

Judge Andrews distinguished the precedent cited by the parties for entry of judgment on less than all claims, noting that unlike in the Federal Circuit's Atlas case, "the majority of Plaintiff’s affirmative claims would be dismissed without prejudice." (emphasis added). Thus, he explained, "if [the Federal Circuit] reverses, the entire case comes back, and, if it affirms, there is no guarantee the case is over."

Citing the fact that "piecemeal appeals are disfavored," Judge Andrews declined to enter the proposed judgment.

It certainly sounds like a near-term appeal is not in the cards unless the plaintiff dismisses the Broga patents with prejudice. But there may be another option - the defendant has filed petitions for IPR on the Broga patents, and proposed that the Court enter judgment on the Plotnikov patents and stay the Broga patents, asserting that the interests of efficiency would be served by holding off on further proceedings until the PTAB decides whether to institute. The plaintiff opposes that approach.

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