Unresolved Counterclaim Means No Final Judgment and No Appellate Jurisdiction

Case: Enzo Biochem, Inc. v. Gen-Probe Inc. (9/30/05 - No. 04-1570)

The One Sentence Summary: The Federal Circuit panel lacked jurisdiction over the appeal of a summary judgment ruling when the district court had never ruled upon an unresolved claim of inequitable conduct.

What They Were Fighting About: The district court had granted summary judgment of invalidity of a patent due to the on-sale bar and entered judgment for defendant. However, defendant's counterclaim of invalidity of the patent due to inequitable conduct was never ruled upon nor dismissed.

Federal Circuit Holdings:

• The presence of an unresolved counterclaim of invalidity meant that there was no "final judgment" for appeal, and that the appellate court lacked jurisdiction.
• Although the district court asked the parties whether there were any remaining issues after it granted summary judgment, and was not told of the remaining counterclaim, this did not constitute a waiver of the counterclaim.