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NORDOCK, INC.,
Plaintiff,
SYSTEMS, INC.,
Defendant.
ORDER
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
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.
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
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
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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
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.
Immediate Appeal the Courts Order Dated November 21, 2017, and to Stay
_________________________
WILLIAM E. DUFFIN
U.S. Magistrate Judge
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