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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF WISCONSIN

NORDOCK, INC.,

Plaintiff,

v. Case No. 11-CV-118

SYSTEMS, INC.,

Defendant.

ORDER

Currently before the court is plaintiff Nordock, Inc.s expedited non-dispositive

motion to stay these proceedings and certify the courts November 21, 2017 Decision

and Order (ECF No. 270) for immediate appeal pursuant to 28 U.S.C. 1292(b). (ECF

No. 273.)

The Court of Appeals for the Federal Circuit remanded this action, in part, to

consider the parties arguments with respect to the relevant article of manufacture in

the first instance. Nordock, Inc. v. Sys., Inc., 681 F. App'x 965, 966 (Fed. Cir. 2017). On

November 21, 2017, this court issued a Decision and Order outlining the test for the

finder of fact to apply in determining the article of manufacture. Nordock, Inc. v. Sys.,

Inc., No. 11-CV-118, 2017 U.S. Dist. LEXIS 192413 (E.D. Wis. Nov. 21, 2017). The court

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approved the test first articulated by the United States as amicus curiae in Samsung

Electronics Co., Ltd. v. Apple Inc., Brief for the United States as Amicus Curiae Supporting

Neither Party, 2016 WL 3194218, 2016 U.S. S. Ct. Briefs LEXIS 2322.

28 U.S.C. 1292(b) provides:

When a district judge, in making in a civil action an order not otherwise


appealable under this section, shall be of the opinion that such order
involves a controlling question of law as to which there is substantial
ground for difference of opinion and that an immediate appeal from the
order may materially advance the ultimate termination of the litigation, he
shall so state in writing in such order.

If the district court so states in such an order, the court of appeals then has discretion

whether to hear the interlocutory appeal. Id. Thus, there are four statutory criteria for

the grant of a section 1292(b) petition to guide the district court:

there must be a question of law, it must be controlling, it must be


contestable, and its resolution must promise to speed up the litigation. There
is also a nonstatutory requirement: the petition must be filed in the district
court within a reasonable time after the order sought to be appealed.

Ahrenholz v. Bd. of Trs., 219 F.3d 674, 675-76 (7th Cir. 2000) (citing Richardson Electronics,

Ltd. v. Panache Broadcasting of Pennsylvania, Inc., 202 F.3d 957, 958 (7th Cir. 2000))

(emphasis in original). Unless all these criteria are satisfied, the district court may not

and should not certify its order for an immediate appeal under section 1292(b). Id. at

676. (emphasis in original). The court finds it necessary to address only whether

Nordock has shown there is substantial ground for difference of opinion.

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The federal scheme does not provide for an immediate appeal solely on the

ground that such an appeal may advance the proceedings in the district court.

Ahrenholz v. Bd. of Trs., 219 F.3d 674, 676 (7th Cir. 2000) (quoting Harriscom Svenska AB v.

Harris Corp., 947 F.2d 627, 631 (2d Cir. 1991)). Moreover, 1292(b) was not intended

merely to provide an avenue for review of difficult rulings in hard cases, and the mere

fact that there is a lack of authority on a disputed issue does not necessarily establish

some substantial ground for a difference of opinion under the statute. Fed. Deposit Ins.

Corp. v. First Nat'l Bank, 604 F. Supp. 616, 620 (E.D. Wis. 1985) (citing United States ex rel.

Hollander v. Clay, 420 F. Supp. 853, 859 (D. D.C. 1976)); see also Anderson v. Foster, No. 13-

CV-256-JPS, 2013 U.S. Dist. LEXIS 121847, at *6 (E.D. Wis. Aug. 27, 2013) ([T]he mere

lack of judicial precedent on the issue does not establish substantial ground for

difference of opinion.) (quoting In re Bridgestone/Firestone, Inc. Tires Products Liab. Litig.,

212 F. Supp. 2d 903, 909 (S.D. Ind. 2002)).

This court was apparently the third district court in the country to articulate the

test applicable to determining the article of manufacture under 289. See Apple Inc. v.

Samsung Elecs. Co., No. 11-CV-01846-LHK, 2017 U.S. Dist. LEXIS 177199, at *86 (N.D.

Cal. Oct. 22, 2017) (citing Jury Instructions at 15-16, Columbia Sportswear N. Am., Inc. v.

Seirus Innovative Accessories, Inc., No. 3:17-cv-01781-HZ (S.D. Cal. Sept. 9, 2017), ECF No.

378.). All three courts essentially agreed and adopted the test articulated by the United

States as amicus curiae in Samsung Electronics Co., Ltd. v. Apple Inc., Brief for the United

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States as Amicus Curiae Supporting Neither Party, 2016 WL 3194218, 2016 U.S. S. Ct.

Briefs LEXIS 2322. Although it is certainly possible that other courts will reach different

conclusions, in the face of such current consensus on the issue, the court is hard-pressed

to find there is substantial ground for difference of opinion as to what the relevant

test is.

Moreover, the court of appeals already had the opportunity to consider the

question Nordock asks this court to certify for appeal. In this case and in Samsung, the

Court of Appeals for the Federal Circuit had the opportunity to articulate the test for

identifying the article of manufacture under 289. Instead, both times it remanded the

cases to the respective district court to resolve the question in the first instance. See Apple

Inc. v. Samsung Elecs. Co., 678 F. App'x 1012, 1014 (Fed. Cir. 2017); Nordock, Inc. v. Sys.,

Inc., 681 F. App'x 965, 966-67 (Fed. Cir. 2017). The factual record is not materially

different now than it was when the court of appeals first passed on resolving this

question.

IT IS THEREFORE ORDERED that Nordock, Inc.s Motion to Certify For

Immediate Appeal the Courts Order Dated November 21, 2017, and to Stay

Proceedings Pending Certification and Appeal (ECF No. 273) is denied.

Dated at Milwaukee, Wisconsin this 19th day of December, 2017.

_________________________
WILLIAM E. DUFFIN
U.S. Magistrate Judge

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