United States District Court, District of Columbia
MEMORANDUM OPINION [DKT.# 180]
RICHARD J. LEON, UNITED STATES DISTRICT JUDGE
legal malpractice case has been remanded to this Court for a
trial to resolve Count I of the operative complaint.
Plaintiffs, Seed Company Limited, and its president, an
inventor, Shigeru Tamai (collectively, "Seed" or
"plaintiffs"), however, request that I certify for
appeal under Federal Rule of Civil Procedure 54(b) my July
18, 2017 Order dismissing the three remaining counts (Counts
II, III, and IV) and stay proceedings as to Count I until the
appeal of Counts II, III, and IV is complete. For the
following reasons, Seed's motion must be GRANTED.,
May 21, 2008 amended complaint, Seed alleges two primary and
two contingent legal malpractice claims. The claims all stem
from the same root allegation: Seed lost its right to patent
a correction tape dispenser in the United States because
attorneys from Armstrong, Westerman, Hattori, McLeland &
Naughton, LLP ("the Armstrong firm") failed to
attach an English translation of a foreign patent application
to a motion filed with the United States Board of Patent
Appeals and Interferences ("the Board").
See Am. Compl. ¶¶ 13-31 [Dkt. #29]. This
allegedly deficient motion was part of an attempt by Seed to
prove that it had invented the correction tape dispenser at
issue before Christopher Stevens
("Stevens"), a competing inventor who had also
applied for a correction tape dispenser patent in the United
States. See Id. ¶¶ 19-22.
establish that it was first to invent correction tape
dispenser, Seed attached two earlier filed patent
applications to its motion. See Am. Compl. ¶
22. One had been filed in Japan; the other had been filed
pursuant to the Patent Cooperation Treaty ("PCT").
See Id. Both were written in Japanese. See
Id. ¶¶ 13-14. The Board's rules required
that Seed include an English translation of each foreign
language application submitted with its motion. See
Stevens v. Tamai, 366 F.3d 1325, 1328 (Fed. Cir. 2004)
(citing 37 C.F.R. § 1.647 (2003)). But the attorneys
representing Seed attached a translation only of the earliest
filed application, the one filed with the Japanese Patent
Office. See Am. Compl. ¶ 22. Seed's PCT
application was submitted untranslated. See id.
deciding Seed's motion, the Board declined to consider
the untranslated PCT application but did, at first, rule in
Seed's favor. See Am. Compl. ¶ 23. That
success, however, was short lived. Stevens appealed, and the
United States Court of Appeals for the Federal Circuit
("Federal Circuit") reversed the Board's
determination that Seed was first to invent the correction
tape dispenser. See Id. ¶ 31; see generally
Stevens, 366 F.3d at 1327-35. According to the Federal
Circuit, Seed's failure to file a translation of its PCT
application precluded Seed from relying on either the
Japanese application or the PCT application to establish the
date it reduced its correction tape dispenser to practice.
See Am. Compl. ¶ 31; Stevens, 366 F.3d
at 1335. As a result, Stevens was awarded the United States
patent on the correction tape dispenser, and Seed's
patent application had to be' abandoned. See Am.
Compl. ¶¶ 31, 39.
of the amended complaint alleges that this failure to attach
a translation of the PCT application to Seed's motion
before the Board constitutes malpractice. See Am.
Compl. ¶¶ 42-46. In Count II, Seed claims that its
attorneys committed further malpractice by providing
inaccurate legal advice about the consequences of
Stevens's appeal to the Federal Circuit after Seed's
initial success before the Board. See Id.
¶¶ 47-52. Counts I and II are both alleged against
all named defendants.
III and IV, by contrast, are alleged against a subset of
defendants. In October 2003, while Stevens's appeal to
the Federal Circuit was pending, the Armstrong firm split up.
See Seed I, 832 F.3d at 330. Some Armstrong
attorneys formed Westerman, Hattori, Daniels, and Adrian, LLP
(the "Westerman defendants"), which continued
representing Seed. See Id. Others formed Kratz,
Quintos, and Hanson, LLP (the "Kratz defendants"),
the Armstrong firm's successor in interest. See
id.; Am. Compl. ¶ 4. Counts III and IV of the
amended complaint were pleaded as contingent claims, raised
only against the Kratz defendants, and to be asserted only in
the event Count I or II was dismissed on statute of
limitation grounds. See Am. Compl. ¶¶
53-66. In these contingent claims, Seed alleges that the
Kratz defendants gave inaccurate legal advice about the date
the statute of limitations would expire for malpractice
claims arising from the Armstrong firm's prosecution of
Seed's correction tape dispenser patent application.
defendants did, in fact, raise statute of limitations
defenses to Counts I and II of the amended complaint. In
August 2016, our Court of Appeals addressed those defenses
and held the claims timely only as to the Westerman
defendants. See Seed I, 832 F.3d at 332, 339. As
alleged "against the Kratz defendants," the Court
of Appeals deemed Counts I and II "barred by the statute
of limitations." Id. at 339.
dismissal of Counts I and II on statute of limitations
grounds as to the Kratz defendants ripened Counts III and IV.
The Court of Appeals further held, with respect to Count I,
that neither Seed nor the Westerman defendants were entitled
to summary judgment, leaving resolution of that claim
"for the factfinder at trial." Seed I, 832
F.3d at 337-38. As a result of our Circuit Court's
holdings, then, Counts I and II remained pending against the
Westerman defendants only-with Count I earmarked for
trial-and Counts III and IV were newly ripe as to the Kratz
remand, the Westerman defendants moved for judgment on the
pleadings as to Count II, and the Kratz defendants moved for
summary judgment on Counts III and IV. I granted both motions
on July 18, 2017, reasoning that Seed had waived Count II
earlier in this litigation and that undisputed facts
foreclose Seed's success on the merits of Counts III and
IV. See Seed II, 266 F.Supp.3d at 150; Order (July
18, 2017) [Dkt. #175]. Thus, as this litigation now stands,
Count I must be tried as to the Westerman defendants, and no
claims remain pending against the Kratz defendants.
now moves for Rule 54(b) certification of the July 18, 2017
Order dismissing Counts II, III, and IV and for a stay of
proceedings on Count I. See Pis.' Mot. Under
Rule 54(b) [Dkt. # 180]. Seed, in effect, wants to appeal my
July 18, 2017 decision resolving Counts II, III, and IV as a
matter of law before this case proceeds to trial on Count I.
All defendants oppose the request. See Defs.'
Joint Opp. to Pis.' Rule 54(b) Mot. [Dkt. # 182],
STANDARD OF REVIEW
an action presents more than one claim for relief,"
Federal Rule of Civil Procedure 54(b) permits a district
court to "direct entry of a final judgment as to one or
more, but fewer than all, claims or parties only if the court
expressly determines that there is no just reason for
delay." Fed.R.Civ.P. 54(b). Deciding whether to certify
a judgment under Rule 54(b) therefore involves two steps:
"A district court must first determine that it is
dealing with a 'final judgment, '" and if it is,
"the district court must go on to determine whether
there is any just reason for delay." Curtiss-Wright
Corp. v. Gen. Elec. Co., 446 U.S. 1, 7-8 (1980).
first step is satisfied when a court has issued a
"decision [that] is an ultimate disposition regarding a
party's claim for relief." Serv. Employees
Int'l Union Nat'l Indus, Pension Fundv. Sci. &
Commercial Sys. Corp., 249 F.Supp.3d 130, 133 (D.D.C.
second step, courts "weigh both 'justice to the
litigants' and 'the interest of sound judicial
administration.'" Brooks v. Dist. Hosp.
Partners, L.P.,606 F.3d 800, 806 (D.C. Cir. 2010)
(quoting Curtiss-Wright, 446 U.S. at 6, 8). The
considerations involved in this balancing "will
inevitably differ from case to case." Id. But
they include the determinations "whether the claims
under review [are] separable from the others remaining to be
adjudicated and whether the nature of the claims already
determined [is] such that no appellate court [will] have to
decide the same issues more than once even if there [are]
subsequent appeals." Id. (quoting
Curtiss-Wright, 446 U.S. at 8). Courts often
"employ a list of five relevant factors"-