Unadjudicated Unenforceability Counterclaim Precludes Final Judgment

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.