     United States Court of Appeals for the Federal Circuit

                                        03-1380

                       COMPETITIVE TECHNOLOGIES, INC.,

                                                       Plaintiff,

                                          and

            BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS,

                                                       Plaintiff-Appellant,

                                           v.

       FUJITSU LIMITED and FUJITSU HITACHI PLASMA DISPLAY LIMITED,

                                                       Defendants-Appellees,

                                          and

        FUJITSU AMERICA, INC., FUJITSU GENERAL AMERICA CORP.,
     FUJITSU GENERAL LIMITED, and FUJITSU MICROELECTRONICS, INC.,

                                                       Defendants.



        Morgan Chu, Irell & Manella LLP, of Los Angeles, California, filed a combined
petition for rehearing and rehearing en banc for plaintiff-appellant. With him on the
petition were Joseph M. Lipner and Perry Goldberg.

      Karen L. Hagberg, Morrison & Foerster LLP, of New York, New York, filed a
response to the petition for defendants-appellees. With her on the response were
Preston Moore and Jun Tsutsumi.


Appealed from:   United States District Court for the Northern District of California

Magistrate Judge Joseph C. Spero
United States Court of Appeals for the Federal Circuit]

                                    03-1380

                       COMPETITIVE TECHNOLOGIES, INC.,

                                                   Plaintiff,

                                     and

              BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS,

                                                   Plaintiff-Appellant,

                                      v.

          FUJITSU LIMITED and FUJITSU HITACHI PLASMA DISPLAY LIMITED,

                                                   Defendants-Appellees,

                                     and

        FUJITSU AMERICA, INC., FUJITSU GENERAL AMERICA CORP.,
     FUJITSU GENERAL LIMITED, and FUJITSU MICROELECTRONICS, INC.,

                                                   Defendants.


                         ON PETITION FOR REHEARING

Before MAYER,* GAJARSA, and DYK, Circuit Judges.

DYK, Circuit Judge.




      *
           Judge Haldane Robert Mayer vacated the position of Chief Judge on
December 24, 2004.
                                          ORDER

       The Board of Trustees of the University of Illinois (the “University”) petitions for

rehearing of our earlier decision dismissing the University’s appeal for lack of

jurisdiction. We deny the petition.1

       The University urges that our decision is contrary to the Fifth Circuit decision in

Sherwinski v. Peterson, 98 F.3d 849 (5th Cir. 1996). We disagree. In Sherwinski, the

district court denied the motion to dismiss by the Texas Department of Criminal Justice

(the “Department”), stating that “‘[u]ntil the factual and legal basis of the case has been

further developed, no defendants will be dismissed.’” Id. at 851 (alteration in original).

The Fifth Circuit noted that, although the district court’s order did not expressly find that

the Department was not immune from suit, “the end result is the same” because the

Department did not receive the dismissal to which it was entitled. Id. Thus, Sherwinski

is not a case in which the Eleventh Amendment immunity issue itself was expressly left

open to reconsideration by the district court, as in this case; rather, the district court in

Sherwinski declined to recognize the Department’s immunity defense and refused to

dismiss.

       Second, the University urges that the Second Circuit decision in In re “Agent

Orange” Product Liability Litigation, 745 F.2d 161 (2d Cir. 1984), on which we relied,

see Competitive Techs., Inc. v. Fujitsu Ltd., 374 F.3d 1098, 1104 (Fed. Cir. 2004), is no

longer good law. While aspects of Agent Orange have been called into question by



       1
             Contrary to the response by Fujitsu Limited and Fujitsu Hitachi Plasma
Display Limited (collectively, “Fujitsu”) to the University’s petition for rehearing (see
Response of Defendants-Appellees at 4-5), we have not decided any aspect of the
sovereign immunity dispute.



03-1380                                      2
later decisions of the Second and Ninth Circuits, see Dibble v. Fenimore, 339 F.3d 120,

124 (2d Cir. 2003); Lutz v. Sec’y of the Air Force, 944 F.2d 1477, 1481-82 (9th Cir.

1991), those later decisions did not call into question those portions of Agent Orange on

which we relied, see Competitive Techs., 374 F.3d at 1104.          Neither of the later

decisions held or suggested that a tentative decision of the district court on immunity

grounds, expressly subject to further consideration because of unresolved issues in the

case, meets the first prong of the Cohen test. See Cohen v. Beneficial Indus. Loan

Corp., 337 U.S. 541, 546-47 (1949).         Indeed, both Dibble and Lutz expressly

distinguished Agent Orange under the first prong of Cohen. In Lutz, the court stated:

      In Agent Orange the district court had expressly stated that its order was
      “tentative” and that the government could “renew its motion to dismiss at
      any time before or during trial as further evidence and legal developments
      suggest.” 745 F.2d at 164. Here, by contrast, the district court appears to
      have determined conclusively the question of whether the defendants’
      actions were “incident to military service,” thus meeting the first prong.

944 F.2d at 1481. Similarly, the court in Dibble noted that “the order appealed from in

Agent Orange was ‘tentative’ in its wording, thus raising doubt whether it ‘conclusively

determined’ the question of immunity.”     339 F.3d at 124.      As we have held, the

decisions of the Supreme Court in Coopers & Lybrand v. Livesay, 437 U.S. 463 (1978),

and Swint v. Chambers County Commission, 514 U.S. 35 (1995), which was decided

after Puerto Rico Aqueduct & Sewer Authority v. Metcalf & Eddy, Inc., 506 U.S. 139

(1993), make clear that a non-final resolution does not satisfy the Cohen test. Thus, the

application of the first prong of Cohen in Agent Orange has not been undermined by

subsequent decisions of the Supreme Court or other courts of appeals.




03-1380                                    3
Accordingly,

IT IS ORDERED THAT:

The Petition for Rehearing is denied.



                                             FOR THE COURT


__January 03,2005__                     Timothy B. Dyk_______
          Date                               Timothy B. Dyk
                                             Circuit Judge




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