This morning, the Federal Circuit issued a precedential opinion in a patent case and a nonprecedential opinion denying permission for an interlocutory appeal. The Federal Circuit also issued three Rule 36 judgments. Here are the introductions to the opinions and links to the Rule 36 judgments.

Warsaw Orthopedic, Inc. v. Sasso (Precedential)

This appeal is from the decision of the United States District Court for the Northern District of Indiana, dismissing a declaratory judgment complaint filed by Warsaw Orthopedic, Inc.; Medtronic, Inc.; and Medtronic Sofamor Danek, Inc. (collectively, “Medtronic”) against Dr. Rick Sasso, a surgeon and inventor. The district court dismissed the complaint without prejudice, applying the doctrine of federal court “abstention” in view of the concurrent action in Indiana state court between the same parties concerning the same dispute; that decision is on appeal to the Indiana Court of Appeals.

The state court action is described by Dr. Sasso as a contract case for payment for patent rights, and the federal action is described by Medtronic as a patent case in which payment requires valid patents. Medtronic argues that the district court’s “abstention” was an abuse of discretion, because the federal courts have exclusive jurisdiction over patent cases, and patent validity is fundamental to resolution of this dispute. Thus, Medtronic argues that abstention was inappropriate because the federal court had the obligation to receive and resolve this dispute.

We conclude that the district court acted within its discretion, abstaining without prejudice, on the facts hereof, for the question of contract interpretation is on appeal in the Indiana state court, and federal action based on the federal issues is not precluded.

AlexSam, Inc. v. HealthEquity, Inc. (Nonprecedential)

HealthEquity, Inc. petitions for permission to appeal from an interlocutory order of the United States District Court for the District of Utah denying its motion to dismiss, which the district court certified pursuant to 28 U.S.C. § 1292(b). AlexSam, Inc. opposes the petition.

Under § 1292(b), a district court may certify that an order that is not otherwise appealable is one involving a controlling question of law as to which there is substantial ground for difference of opinion and for which an immediate appeal may materially advance the ultimate termination of the litigation. Ultimately, this court must exercise its own discretion in deciding whether to grant permission to appeal an interlocutory order. See In re Convertible Rowing Exerciser Pat.Litig., 903 F.2d 822, 822 (Fed. Cir. 1990). In this case, we conclude that we should not permit an interlocutory appeal.

Rule 36 Judgments