The U.S. Court of Appeals for the Federal Circuit dismissed the appeal of Enzo Biochem on the basis that since Jen-Probe’s unenforceability counterclaim remained unadjudicated, there was no final decision within the meaning of 28 U.S.C. § 1295(a)(1). Enzo Biochem, Inc. v. Jen-Probe Inc., Case No. 04-1570 (Fed. Cir. July 13, 2005) (Lourie, J.).
The present case arose from a 2002 remand from the Federal Circuit to the district court focusing on the written description requirement of 35 U.S.C. § 112. On remand, the Court considered Jen-Probe’s motion for summary judgment of invalidity on a different ground, the on-sale bar of § 102(b). The district court granted Jen-Probe’s motion for summary judgment on a ground and entered judgment that all the claims of the patent in suit were invalid. After Enzo filed its notice of appeal, Jen-Probe moved to dismiss the appeal, arguing its unadjudicated counterclaim of unenforceability rendered the district court judgment nonfinal.
On appeal, Enzo argued that not only did the district court believe it had finally adjudicated the case, but that when the parties were asked by the district court, in the context of the summary judgment hearings, whether any issues remained, counsel for Jen-Probe answered "no." While the Federal Circuit found it "regrettable" that Jen-Probe misled the trial judge "with the impression that no claims remained in the case, we have no choice but to take cognizance of the nonfinality created by the unquestioned existence of that counterclaim."
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