2010-1157 Order
2010-1157 Order
UNIVERSITY OF PITTSBURGH,
Plaintiff, 07cv0491
ELECTRONICALLY FILED
v.
Defendant.
Following a remand to this Court from the United States Court of Appeals for the Federal
Circuit, (Doc. No. 344), University of Pittsburgh v. Varian Medical Systems, Inc., 569 F.3d 1328
AND NOW, to-wit this 1st day of September, 2009, in accordance with this
Court’s “Order Adopting Special Master’s Report and Recommendation (Doc. No.
254) in Part; and Granting Defendant’s Motion for Summary Judgment for Lack
of Standing (Doc. No. 127)” [Doc. No. 294], and as directed by the Order and
Judgment of the United States Court of Appeals for the Federal Circuit (Doc. No.
344), the Court hereby enters final judgment in this action. It is hereby
ORDERED, ADJUDGED, and DECREED as follows: All of Plaintiff University
of Pittsburgh’s claims for relief set forth in its Complaint (Doc. No. 1) are
DISMISSED WITHOUT PREJUDICE.
Amended Judgment (Doc. No. 346), which requests the Court to reconsider the Amended
Judgment pursuant to Fed. R. Civ. P. 59(e) or, in the alternative, requests that the judgment be
vacated pursuant to Fed R. Civ. P. 60(b) in order to allow plaintiff an opportunity to file an
Case 2:07-cv-00491-AJS Document 350 Filed 10/02/09 Page 2 of 3
amended complaint in this action. In its Brief in Support, plaintiff argues that because it had
previously cured the standing defect, plaintiff “intended, upon designation of the dismissal as
without prejudice, to amend its complaint to allege the existence of the CMU assignment and the
fact that [plaintiff] is now the sole owner of the patents-in-suit. The Amended Judgment prevents
[plaintiff] from doing so, however. Therefore, in order to effectuate the Federal Circuit’s
intention that Pitt be afforded an opportunity to establish that the standing defect has been cured,
Pitt requests that the Court vacate that judgment in order to allow Pitt to amend its complaint and
continue pursuing its claims against Varian.” Brief in Support of Plaintiff’s Motion To Vacate
After careful consideration of plaintiff’s motion and brief in support, defendant Varian
Medical Systems Inc.’s response and brief in opposition, and the Opinion and Mandate of the
Court of Appeals for the Federal Circuit, the Court agrees with defendant that plaintiff’s motion
must be dismissed. Although plaintiff’s legal position with respect to the effect of a dismissal
without prejudice is not without appeal, in the abstract, the Court deems the Opinion and
Mandate of the Court of Appeals to foreclose the relief plaintiff requests in this case.
The Court of Appeals held that this Court’s Judgment had to be without prejudice “so as
. . . [W]e hold the district court erred in dismissing the claims "with
prejudice." Thus, we vacate the dismissal and remand with instructions to
designate the dismissal as "without prejudice."
*****
. . . Varian argues that we should affirm the "with prejudice" nature of the
district court's dismissal because we have twice affirmed such a dismissal with
prejudice. We disagree; the cases cited by Varian do not support dismissal with
prejudice in this case. . . . Thus, our decisions in [Sicom Sys., Ltd. v. Agilent
2
Case 2:07-cv-00491-AJS Document 350 Filed 10/02/09 Page 3 of 3
Techs., Inc., 427 F.3d 971, 980 (Fed.Cir. 2005) and [Textile Prods., Inc. v. Mead
Corp., 134 F.3d 1481, 1484-85 (Fed.Cir. 1998)] are entirely consistent with this
court's repeated statements that a dismissal for lack of standing should generally
be without prejudice so as to permit the filing of a new action by a party with
proper standing. In this case, we can discern no facts that merit deviation from that
general rule, and we hold that the district court abused its discretion.
University of Pittsburgh v. Varian Medical Systems, Inc., 569 F.3d at 1330, 1333. (emphasis
added).
Thus, the Court of Appeals’ intention is unambiguously expressed in its Opinion and
Mandate, and this Court’s Amended Judgment – dismissing the case without prejudice and
entering judgment for defendant – is entirely consistent with the Court of Appeals’ directions to
dismiss without prejudice “so as to permit the filing of a new action by a party with proper
standing.” Filing such a new action will “effectuate the Federal Circuit’s intention that [Plaintiff]
be afforded an opportunity to establish that the standing defect has been cured,” and will also
effectuate the Opinion and Mandate of the Court of Appeals, which found no reason to deviate
from the general rule that the party with standing be given an opportunity to file a new suit.
Plaintiff’s Motion to Vacate September 1, 2009 Amended Judgment (Doc. No. 346) is
HEREBY DENIED. However, the Court will STAY the case for 30 days to permit plaintiff an
s/ Arthur J. Schwab
Arthur J. Schwab
United States District Judge