United States District Court, D. Delaware
REPORT AND RECOMMENDATION
MARY PAT THYNGE, Magistrate Judge.
This patent infringement matter is brought by TruePosition, Inc. ("TruePosition") against Polaris Wireless, Inc. ("Polaris"). TruePosition moves under FED. R. CIV. P. 54(b) to allow an interlocatory appeal to the United States Court of Appeals for the Federal Circuit of this court's finding of invalidity of Claims 113 and 114, or alternatively, for voluntary dismissal of Claim 98 without prejudice and entry of final judgment as to Claims 113 and 114 under FED. R. CIV. P. 41(a)(2). For the reasons stated below, TruePosition's motions should be denied.
TruePosition is a Delaware corporation, operating in Pennsylvania, which provides services and equipment for locating mobile devices for national security and intelligence purposes. Polaris is a Delaware corporation, operating in California, and provides similar services and equipment for determining the location of mobile devices. TruePosition and Polaris compete for business from cellular network carriers and other customers that use equipment and software for locating mobile devices.
TruePosition's infringement claims focus on Polaris' purported use of probes for mobile station or mobile device location without disrupting the carrier's system. TruePosition filed suit on May 23, 2012 alleging infringement by Polaris of U.S. Patent No. 7, 783, 299 (the "299 Patent"). On June 3, 2013, Polaris petitioned for Inter Partes Review ("IPR") with the Patent and Trademark Office ("Patent Office") of Claims 113 and 114. On July 12, 2013, Polaris moved to stay this proceeding pending the outcome of the IPR, which was denied. After conducting a Markman hearing on October 18, 2013, the court found Claims 113 and 114 invalid as indefinite in a Report and Recommendation issued on February 2, 2014. The Patent Office granted Polaris' IPR petition on November 15, 2013. Contrary to this court's ruling, the Patent Office, in granting Polaris' petition, found Claims 113 and 114 as definite. Thereafter, while the IPR was ongoing, TruePosition filed objections to the Report and Recommendation and moved, unopposed, to stay the proceedings pending the resolution of its objections.
On July 15, 2014, the Patent Office held an IPR hearing on the validity of Claims 113 and 114 based on anticipation and obviousness under 35 U.S.C. §§ 102 and 103. On August 26, 2014, the Honorable Richard G. Andrews affirmed the finding in the Report and Recommendation that the "means for detecting" steps of Claims 113 and 114 were indefinite and incapable of construction.
Subsequent settlement efforts between the parties were unsuccessful. TruePosition thereafter informed Polaris that it would not continue to litigate only Claim 98 without Claims 113 and 114. Since TruePosition would likely appeal an adverse determination by the Patent Office on Claims 113 and 114, it suggested, for efficiency purposes, that the claim construction and invalidity issues from both forums be addressed together on appeal. Polaris rejected TruePosition's proposal and demanded dismissal with prejudice. On October 16, 2014, TruePosition moved to stay the proceedings on Claim 98, pending its possible appeal of Claims 113 and 114 to the Federal Circuit,  relying on Rule 54(b) or alternatively Rule 41(a)(2). TruePosition also offered Polaris a covenant-not-to-sue for Claim 98, unless TruePosition prevailed on appeal. On October 24, 2014, both parties agreed to stay the proceedings in the instant matter pending a final decision on the present motions. On November 5, 2014, the Patent Office found Claims 113 and 114 invalid as anticipated and obvious.
III. FED. R. CIV. P. 54(b)
A. Standard of Review
FED. R. CIV. P. 54(b) provides:
When an action presents more than one claim for relief - whether as a claim, counterclaim, crossclaim, or third-party claim... the court may direct entry of a final judgment as to one or more, but fewer than all, claims... only if the court expressly determines that there is no just reason for delay. Otherwise, any order or other decision, however designated, that adjudicates fewer than all the claims... does not end the action as to any of the claims... and may be revised at any time before the entry of a judgment adjudicating all the claims and all the parties' rights and liabilities.
Therefore, "certification under Rule 54(b) involves a two step analysis: (1) a determination of whether a claim to be appealed is final; and (2) a determination ...