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Rule 54(b) doesn’t permit slicing patent’s claims into separate final judgments

The US Court of Appeals for the Federal Circuit concluded that Federal Rule of Civil Procedure 54(b) does not permit entry of partial final judgment on some asserted claims of a patent while other asserted claims of the same patent remain unresolved. The Court explained that infringement of different claims of the same patent generally constitutes a single cause of action. ParkerVision, Inc. v. Qualcomm Inc., Case Nos. 26-1033; -1035 (Fed. Cir. Sept. 30, 2026) (Prost, Chen, Stark, JJ.)

ParkerVision sued Qualcomm in 2014 for infringement of two patents directed to electromagnetic signal conversion. One patent included asserted claims directed to down-conversion (receiver claims). The other patent included both receiver claims and asserted claims directed to up-conversion (transmitter claims).

In 2024, the Federal Circuit vacated an earlier summary judgment of noninfringement and remanded. Following claim construction on remand, the parties stipulated to noninfringement of the receiver claims, and the district court entered partial summary judgment. That ruling resolved all asserted claims of the patent directed only to down-conversion but left unresolved the transmitter claims of the patent covering both down-conversion and up-conversion. At ParkerVision’s request, and over Qualcomm’s objection, the district court entered judgment under Rule 54(b) as to the receiver claims and “severed and stayed” the transmitter claims pending appeal. ParkerVision appealed.

The Federal Circuit concluded that Rule 54(b) did not authorize entry of final judgment as to only some asserted claims of the patent covering both receiver and transmitter functionality. Rule 54(b) permits entry of final judgment only as to one or more “claims” for relief, coupled with an express determination that there is no just reason for delay. The Court explained that a “claim” under Rule 54(b) means a cause of action, not an individual patent claim.

Relying on 35 U.S.C. §§ 271(a) and 281 and Federal Circuit precedent, the Court explained that infringement of different claims of the same patent generally constitutes a single cause of action. ParkerVision’s complaint likewise pleaded a single infringement count for the patent covering both down-conversion and up-conversion and did not separately plead causes of action directed to the receiver and transmitter claims. The Court explained that because the receiver and transmitter claims were part of the same cause of action and the transmitter claims remained unresolved, the district court had not entered a final judgment subject to appellate review.

The Federal Circuit also rejected ParkerVision’s alternative jurisdictional arguments. ParkerVision contended that the judgment was final at least as to the patent directed only to down-conversion because all asserted claims of that patent had been resolved. The Court disagreed, explaining that the district court had not been asked to enter a Rule 54(b) judgment limited to that patent and had not made the required express determination that there was “no just reason for delay” as to that patent. Without a valid Rule 54(b) judgment as to the down-conversion patent, there was also no basis for pendent appellate jurisdiction over issues involving the patent covering both down-conversion and up-conversion.

The Federal Circuit [...]

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Judicial Bias and Erroneous Admission of Expert Testimony Prompt Case Reassignment

The US Court of Appeals for the Federal Circuit reversed a district court’s decision to admit expert testimony and remanded the case to a different judge, noting that “from the moment this case fell in his lap, the trial judge’s statements indicate that he did not intend to manage a fair trial with respect to the issues in this case.” Trudell Medical Intl., Inc. v. D R Burton Healthcare, LLC, Case Nos. 23-1777; -1779 (Fed. Cir. Feb. 7, 2025) (Moore, C.J.; Chen, Stoll, JJ.)

Trudell Medical sued D R Burton Healthcare for infringement of a patent directed to respiratory treatment devices. Leading up to trial, Trudell filed a motion in limine seeking to exclude testimony from Dr. John Collins on invalidity and noninfringement. At the pre-trial conference, the court denied the motion in limine. A few days later, however, on the first day of trial, the district court reversed itself and granted the motion in limine after Trudell filed a motion for reconsideration. Moments later, the district court indicated that it would reserve a ruling on the motion until the end of Trudell’s case.

On the third and final day of trial, the district court ruled that Collins was allowed to testify. After trial, the jury returned a verdict that the asserted claims were valid but not infringed. Trudell appealed.

Trudell argued that the district court erred in allowing Collins to testify. The Federal Circuit indicated that it reviews a district court’s decision to admit or exclude evidence under the law of the regional circuit – here, the Fourth Circuit, which applies an abuse of discretion standard. Trudell argued that because Collins did not timely serve an expert report on noninfringement and the failure to do so was neither substantially justified nor harmless, the district court abused its discretion in allowing the testimony. Although D R Burton had filed a seven-page declaration from Collins in support of its opposition to summary judgment of infringement, Trudell argued that it was afforded no opportunity to depose Collins regarding the declaration and was therefore prejudiced by the allowance of the testimony. Trudell argued that the admitted testimony also exceeded the scope of the declaration and was “untethered from the district court’s claim constructions.”

The Federal Circuit agreed, finding that the district court abused its discretion in allowing Collins’s noninfringement testimony because D R Burton did not disclose Collins’ noninfringement opinion in a timely expert report as required by Rule 26. Regarding the declaration, the Court found that it was submitted a month after the close of discovery and therefore was not timely served. The Court concluded that the proper remedy was exclusion of Collins’ noninfringement testimony absent a showing that the failure to disclose was either substantially justified or harmless.

The Federal Circuit affirmed the denial of Trudell’s post-trial motion seeking a finding of infringement. While the Court agreed that without Collins’ testimony there was minimal evidence to support noninfringement, the jury would still have been free to discredit the testimony of Trudell’s [...]

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Rule 54(b) doesn’t permit slicing patent’s claims into separate final judgments

Judicial Bias and Erroneous Admission of Expert Testimony Prompt Case Reassignment

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