Modavox, Inc. v. Yahoo! Inc.

Filing 351

ORDER by Judge Joseph C. Spero granting 340 Motion for Entry of Judgment under Rule 54(b) (jcslc2, COURT STAFF) (Filed on 10/29/2012)

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United States District Court
Northern District of California

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Augme Technologies, Inc.,
Plaintiff,

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v.

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Case No.: 3:09-cv-05386-JCS
ORDER GRANTING MOTION FOR
ENTRY OF SEPARATE AND FINAL
JUDGMENT PURSUANT TO FED. R.
CIV. P. 54(b) [Dkt. No. 340].

Yahoo! Inc.,
Defendant.

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United States District Court
Northern District of California

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I.

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INTRODUCTION
Before the Court is a Motion filed by Augme Technologies, Inc. (“Augme”) requesting the

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Court to declare final judgment on Augme’s infringement claims against Yahoo! Inc. (“Yahoo!”)

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pursuant to Federal Rule of Civil Procedure 54(b). On August 8, 2012, this Court granted

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summary judgment in favor of Yahoo! on Augme’s claims that Yahoo! infringed two of its

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patents. Yahoo! has one counterclaim pending before the Court alleging that Augme has

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infringed one of its own patents, and on this basis, opposes Augme’s Rule 54(b) Motion. This

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Motion is appropriate for decision without oral argument pursuant to Local Rule 7-1(b). The

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hearing scheduled for November 2, 2012 at 9:30a.m. is vacated. For the reasons set forth below,

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the Court GRANTS Augme’s motion for separate and final judgment pursuant to Rule 54(b).1

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II.

BACKGROUND

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On November 16, 2009, Augme filed a lawsuit against Yahoo! alleging infringement of

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the Augme’s U.S. Patent Nos. 6,594,691 (“the ‘691 patent”) and 7,269,636 (“the ‘636 patent”)

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(collectively “the Augme patents”). Dkt. No. 1. On December 21, 2010, Yahoo! filed

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counterclaims against Augme alleging infringement of Yahoo!’s U.S. Patent Nos. 7,512,622 (“the

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The parties have consented to the jurisdiction of the undersigned magistrate judge
pursuant to 28 U.S.C. § 636(c).

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‘622 patent”) and 7,640,320 (“the ‘320 patent”) (collectively “the Yahoo! patents”). Dkt. No. 91.

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Litigation of the Augme claims and Yahoo! counterclaims has progressed on different schedules.

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The Court held separate claim construction hearings for the Augme patents and the Yahoo!

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patents. See Dkt. Nos. 185, 216. During the claim construction hearing on the Yahoo! patents,

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the Court stated that the claims and counterclaims would be tried separately. Declaration of

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Gregory S. Bishop in Support of Augme’s Motion for Entry of Judgment Pursuant to Rule 54(b)

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(“Bishop Decl.”) Ex. 1 (transcript of proceedings) at 86. On January 6, 2012, the Court ordered

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separate schedules and separate trials for the Augme and Yahoo! patents. See Dkt. No. 220.

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On August 8, 2012, the Court granted Yahoo!’s motion for summary judgment and denied
Augme’s motion for partial summary judgment regarding Augme’s claims of infringement. See

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United States District Court
Northern District of California

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Dkt. Nos. 333, 335. The infringing instrumentalities of the Augme patents were alleged to be

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Yahoo!’s behavioral targeting of advertising on the internet. The Court granted summary

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judgment in favor of Yahoo! on the basis that the accused products lack a “service response” (Id.

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at 11-13) and an “embedded first code module” (Id. at 13-20), two claims in Augme’s patents.

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After granting summary judgment on Augme’s claims, the parties filed a stipulation,

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which the Court granted, to dismiss with prejudice Yahoo!’s counterclaim of infringement of the

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‘622 patent. See Dkt. Nos. 337-38. Yahoo!’s counterclaim of infringement of the ‘320 patent

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remains pending before the Court. The ‘320 patent is entitled “Method and apparatus for

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organizing and playing data” and is generally directed to methods for displaying a media interface

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to a user. Dkt. No. 91 at 14. Yahoo!’s motion hearing is set for March 15, 2013, and trial is

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scheduled to begin June 17, 2013. See Dkt. No. 220.

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On September 28, 2012, Augme filed the instant Motion requesting the Court to enter

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final judgment pursuant to Rule 54(b). Augme intends to appeal this Court’s decision and

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contends there is “no just reason for delay.” Fed.R.Civ.P. 54(b). Yahoo! opposes Augme’s

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Motion on the basis that its pending counterclaim involves technological issues that overlap with

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Augme’s claims, and thus, it would be more efficient to allow both of the parties’ claims to

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ultimately proceed on appeal together.

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//
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III.

DISCUSSION
In general, the Federal Circuit reviews only final orders and decisions of a district court.

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See 28 U.S.C. § 1295(a)(1). However, Rule 54(b) allows district courts to certify a partial final

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judgment for the purpose of appeal by directing entry of final judgment as to one or more, but

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fewer than all, of the claims if the there is an express determination that there is no just reason for

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delay. See Fed.R.Civ.P. 54(b). The Supreme Court has established a two-step process for district

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courts to determine whether certification of a claim in a multiple claims action under Rule 54(b)

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is warranted. See Curtiss-Wright Corp. v. General Elec. Co., 446 U.S. 1, 7-8 (1980). First, the

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judgment must be final with respect to one or more claims. See id. A district court’s judgment is

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final where it “ends the litigation on the merits and leaves nothing for the court to do but execute

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United States District Court
Northern District of California

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the judgment.” Catlin v. United States, 324 U.S. 229, 233 (1945). Second, “the district court

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must go on to determine whether there is any just reason for delay.” Curtiss-Wright, 446 U.S. at

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8. This is a discretionary judgment where courts “consider such factors as whether the claims

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under review [are] separable from the others remaining to be adjudicated and whether the nature

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of the claims already determined was such that no appellate court would have to decide the same

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issues more than once.” W.L. Gore & Assocs. Inc. v. Int’l Med. Prosthetics Research Assocs.,

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Inc., 975 F.2d 858, 862 (Fed. Cir. 1992) (citing Curtiss-Wright, 446 U.S. at 8). In addition to

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administrative interests, courts consider the equities involved. Curtiss-Wright, 446 U.S. at 8.

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Where a counterclaim remains pending, its “significance for Rule 54(b) purposes turns on their

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interrelationship with the claims on which certification is sought.” Id. at 9.

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Having considered the foregoing factors, the Court finds that certifying Augme’s claims

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for appeal to the Federal Circuit under Rule 54(b) is warranted. Granting summary judgment in

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favor of Yahoo! was a final judgment with respect to the Augme claims. Moreover, there is no

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just reason to delay Augme’s appeal to the Federal Circuit. Yahoo! bases its opposition to

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Augme’s Rule 54(b) Motion on its counterclaim, but this Court already decided that Yahoo!’s

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counterclaim of infringement of the ‘320 patent is separable from Augme’s claims of

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infringement of the ‘691 and ‘636 patents, and severed litigation accordingly. Even if the ‘320

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patent and the Augme patents share common technology and products, Yahoo! has not identified
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one legal or fac
e
ctual issue th Federal Circuit will ha to decid more than once. See W Gore,
he
ave
de
W.L.

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975 F.2d at 862 There are no claims in Yahoo!’s p
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2.
e
n
patent which overlap with this Court
h
t’s

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con
nstruction of the relevant claims in th Augme pa
f
t
he
atents, name the “serv respons and the
ely,
vice
se”

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“em
mbedded firs code modu
st
ule.” Althou some courts may den a Rule 54 Motion when one
ugh
ny
4(b)

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patent remains pending, thi Court find that the di stinct covera of the pa
is
ds
age
atents in this case, as
s

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wel as the equi
ll
ities involve weigh in Augme’s fav to certify Augme’s c
ed,
vor
fy
claims for ap
ppeal to the

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Fed
deral Circuit
t.

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IV.
.

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United States District Court
Northern District of California

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CONCL
LUSION
For the foregoing re
easons, the Court GRAN Augme’ Motion fo final judgm
C
NTS
’s
or
ment

pur
rsuant to Rul 54(b).
le
IT IS SO ORDERE
O
ED.
Dat October 29, 2012
ted:
r

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___
__________
___________
________
Jos
seph C. Sper
ro
Un
nited States M
Magistrate Ju
udge

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