Case: 19-1826   Document: 41     Page: 1   Filed: 06/12/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

                    MEDINOL LTD.,
                    Plaintiff-Appellant

                            v.

  CORDIS CORPORATION, JOHNSON & JOHNSON,
              Defendants-Appellees
             ______________________

                       2019-1826
                 ______________________

    Appeal from the United States District Court for the
 Southern District of New York in No. 1:13-cv-01408-ALC,
 Judge Andrew L. Carter.
                  ______________________

                 Decided: June 12, 2020
                 ______________________

    ELIZABETH GARDNER, Robins Kaplan LLP, New York,
 NY, for plaintiff-appellant. Also represented by DANIELLE
 ROSENTHAL; RICHARD PILDES, NYU School of Law, New
 York, NY.

    GREGORY DISKANT, Patterson Belknap Webb & Tyler
 LLP, New York, NY, for defendants-appellees. Also repre-
 sented by EUGENE M. GELERNTER.
                ______________________
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 2                        MEDINOL LTD.   v. CORDIS CORPORATION



     Before DYK, CLEVENGER, and HUGHES, Circuit Judges.
 HUGHES, Circuit Judge.
      This appeal challenges the denial of Medinol Ltd.’s re-
 quest to reopen a 2014 adverse final judgment under Fed-
 eral Rule of Civil Procedure 60(b)(6). Because the district
 court did not abuse its discretion in denying such relief, we
 affirm.
                                I
      The parties are familiar with the long procedural his-
 tory leading to this appeal. We described the bulk of it in
 our last decision in this litigation, Medinol Ltd. v. Cordis
 Corp., 719 F. App’x 1016 (Fed. Cir. 2018) (Medinol II).
 There, on remand from the Supreme Court, we revisited
 the district court’s first denial of Rule 60(b)(6) relief from a
 2014 final judgment dismissing Medinol’s patent infringe-
 ment claims as barred by the equitable defense of laches.
 See Medinol Ltd. v. Cordis Corp., 137 S. Ct. 1372 (2017)
 (summary opinion granting certiorari, vacating, and re-
 manding); Medinol Ltd. v. Cordis Corp., 15 F. Supp. 3d 389
 (S.D.N.Y. 2014) (Laches Opinion). The Supreme Court re-
 manded the case to us for further consideration in light of
 its decision in SCA Hygiene. 1 In SCA Hygiene, the Court
 held that laches is no longer a valid defense to bar damages
 for patent infringement, 137 S. Ct. at 967, overruling
 Aukerman, our longstanding precedent on which the dis-
 trict court relied both in dismissing Medinol’s case and in
 denying Medinol’s subsequent Rule 60(b)(6) motion.
     After hearing oral argument, we in turn remanded the
 case to the district court, vacating the denial of Rule 60(b)



      1  SCA Hygiene Prods. Aktiebolag v. First Quality
 Baby Prods., LLC, 137 S. Ct. 954 (2017), overruling A.C.
 Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020
 (Fed. Cir. 1992) (en banc).
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 relief, which rested solely on our Aukerman precedent. Me-
 dinol II, 719 F. App’x at 1017; see J.A. 1166. We instructed
 the district court on remand to “determine whether the ‘ex-
 traordinary circumstances’ showing required under
 Rule 60(b)(6) has been established,” and we specified that
 as part of that analysis, the district court “should consider
 Medinol’s failure to appeal” the original final judgment, un-
 der the Supreme Court’s decision in Gonzalez v. Crosby,
 545 U.S. 524, 536–38 (2005). Medinol II, 719 F. App’x
 at 1017.
     Back before the district court, 2 Medinol filed a renewed
 Rule 60(b)(6) motion seeking to set aside the laches dismis-
 sal judgment. Medinol argued that the Supreme Court’s
 decisions rendered post-judgment in SCA Hygiene and Pet-
 rella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 667
 (2014) (holding that laches is not a defense to damages for
 copyright infringement), constituted “extraordinary cir-
 cumstances” warranting such relief. J.A. 1607. Medinol
 further argued that its failure to appeal from the original
 judgment of dismissal should not preclude Rule 60(b) relief
 because it reasonably believed at the time that any appeal
 would be “futile” under existing Federal Circuit precedent.
 J.A. 1626–27.
     After receiving full briefing, the district court denied
 the motion, finding that Medinol failed to show the requi-
 site extraordinary circumstances. Medinol Ltd. v. Cordis
 Corp., No. 13-CV-1408, 2019 WL 1428342 (S.D.N.Y.
 Mar. 29, 2019) (District Court Decision). The district court
 rejected Medinol’s argument that “the nature and magni-
 tude of the change in law, the centrality of the changed law
 to the case, and the extreme and undue prejudice [Medinol]


     2    Following remand, the case was reassigned to Dis-
 trict Judge Carter due to the retirement of District Judge
 Scheindlin, who previously had presided over the district
 court litigation.
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 would suffer” justified relief from the judgment. Id. at *3.
 Instead, analogizing to the circumstances in Gonzalez v.
 Crosby, the district court found that Medinol exhibited a
 lack of diligence in pursuing a direct appeal because, de-
 spite understanding the potential significance of the Su-
 preme Court’s imminent Petrella decision (regarding the
 availability of laches as a defense to copyright infringe-
 ment), Medinol voluntarily chose not to appeal. District
 Court Decision at *3. Further, the district court concluded
 that any undue prejudice or injustice Medinol might suffer
 from leaving the judgment in place was not extraordinary
 because (1) Medinol had not been denied the opportunity
 to try its claims, but—as found in the original dismissal or-
 der, see Laches Opinion, 15 F. Supp. 3d at 409—had de-
 layed bringing its infringement action at numerous points
 over 14 years, and then actively decided not to appeal the
 laches dismissal; and (2) any prejudice Medinol might ex-
 perience did not rise to the level faced by movants in prior
 cases where relief had been granted. District Court Deci-
 sion at *3. At root, the district court found this case pre-
 sented “a change in decisional law, and nothing more”; the
 court therefore denied Rule 60(b)(6) relief. Id. at *4.
     Medinol appeals. We have jurisdiction under 28 U.S.C.
 § 1295(a)(1).
                               II
      “When reviewing a ruling under Rule 60(b), we gener-
 ally defer to the law of the regional circuit in which the dis-
 trict court sits, here the Second Circuit, because that rule
 is procedural in nature and not unique to patent law.” Laz-
 are Kaplan Int’l, Inc. v. Photoscribe Techs., Inc.,
 714 F.3d 1289, 1292 (Fed. Cir. 2013) (footnote omitted).
 The Second Circuit reviews a district court’s decision on a
 Rule 60(b) motion for abuse of discretion, which occurs
 when “(1) its decision rests on an error of law or a clearly
 erroneous factual finding; or (2) cannot be found within the
 range of permissible decisions.” In re Terrorist Attacks on
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 MEDINOL LTD.   v. CORDIS CORPORATION                         5



 Sept. 11, 2001, 741 F.3d 353, 357 (2d Cir. 2013) (quotation
 omitted).
     Rule 60(b)(6) allows a district court to “relieve a
 party . . . from a final judgment, order, or proceeding” for
 “any . . . reason that justifies relief.”       Fed. R. Civ.
 P. 60(b)(6). “It is a grand reservoir of equitable power to do
 justice in a particular case. But that reservoir is not bot-
 tomless. Recognizing Rule 60(b)(6)’s potentially sweeping
 reach, courts require the party seeking to avail itself of the
 Rule to demonstrate that ‘extraordinary circumstances’
 warrant relief.” In re Terrorist Attacks, 741 F.3d at 356
 (quoting Stevens v. Miller, 676 F.3d 62, 67 (2d Cir. 2012));
 see Buck v. Davis, 137 S. Ct. 759, 777–78 (2017) (citing Gon-
 zalez, 545 U.S. at 535) (requiring a Rule 60(b)(6) movant to
 show “extraordinary circumstances” justifying reopening a
 final judgment). Relief is warranted under Rule 60(b)(6)
 “where the judgment may work an extreme and undue
 hardship, and [the Rule] should be liberally construed
 when substantial justice will thus be served.” United Air-
 lines, Inc. v. Brien, 588 F.3d 158, 176 (2d Cir. 2009) (quot-
 ing Matarese v. LeFevre, 801 F.2d 98, 106 (2d Cir. 1986)).
 But under no circumstances may a party “use a Rule 60(b)
 motion as a substitute for an appeal it failed to take in a
 timely fashion.” Stevens, 676 F.3d at 67.
      In this appeal, Medinol argues—as it did before the dis-
 trict court—that extraordinary circumstances are present
 because of the nature and magnitude of the Petrella / SCA
 Hygiene change of law regarding the availability of a laches
 defense, and because it would work an undue hardship and
 injustice for Medinol to be denied the opportunity to have
 its patent infringement claims tried on the merits based on
 the initial “ultra vires” district court judgment of dismissal.
 Medinol argues that the district court abused its discretion
 by concluding otherwise, and legally erred by (1) failing to
 consider the import of the change of law, (2) “penalizing”
 Medinol for not taking an initial appeal when any appeal
 would have been “obviously futile,” and (3) violating SCA
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 6                       MEDINOL LTD.   v. CORDIS CORPORATION



 Hygiene by relying on the original laches finding that Me-
 dinol delayed bringing suit.
     We see no abuse of discretion or legal error here. We
 can easily dispose of Medinol’s first and last ascriptions of
 legal error. First, we find no support for Medinol’s conten-
 tion that the district court failed to consider the “signifi-
 cance, magnitude, or nature” of the Petrella / SCA Hygiene
 change of law. Appellant’s Br. 20. There is no doubt that
 the Supreme Court’s decisions in these cases dramatically
 changed the legal landscape for statutory infringement ac-
 tions. The parties fully briefed the district court on this
 change of law, and the court specifically acknowledged Me-
 dinol’s position on the cases’ enormity and significance for
 the dismissed claims. District Court Decision at *3. But
 the district court found those factors outweighed by Medi-
 nol’s decision not to appeal and the absence of extraordi-
 nary prejudice or undue hardship. Id. And Medinol has
 identified no Second Circuit law requiring district courts to
 expressly weigh the significance and nature of a change of
 law when conducting Rule 60(b)(6) analyses.
      Nor did the district court violate SCA Hygiene by fac-
 toring the timing of Medinol’s suit into its undue hardship
 analysis. As the district court recognized, under SCA Hy-
 giene, “[l]aches cannot be interposed as a defense against
 damages where the infringement occurred within the pe-
 riod prescribed by [the Patent Act, 35 U.S.C.] § 286.” Dis-
 trict Court Decision at *2 (quoting SCA Hygiene, 137 S. Ct.
 at 967) (alterations in original). The district court found
 that Medinol had not shown undue hardship or prejudice
 from having been denied the opportunity to try its claims,
 in part because Medinol delayed bringing its infringement
 action. District Court Decision at *3 (citing Laches Opin-
 ion, 15 F. Supp. 3d at 409). By relying on this unappealed
 factual finding of delay the district court was not resurrect-
 ing the laches defense in contravention of SCA Hygiene. Cf.
 Petrella, 572 U.S. at 686–87 (concluding that it was error
 to treat laches as a complete bar to plaintiff’s copyright
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 MEDINOL LTD.   v. CORDIS CORPORATION                          7



 infringement suit, but stating that if plaintiff ultimately
 prevailed on the merits, the district court “may take ac-
 count of her delay in commencing suit” when determining
 appropriate injunctive relief and assessing profits). The
 district court permissibly rejected Medinol’s argument that
 Medinol had been prejudiced by circumstances completely
 beyond its own control.
     As its primary assertion of legal error, Medinol urges
 us to set aside the denial of Rule 60(b) relief because the
 district court impermissibly penalized Medinol for not tak-
 ing a direct appeal that Medinol characterizes as having
 been “futile” during the time period for seeking appellate
 review. We decline to do so.
     Appellees do not argue that a per se bar precludes
 Rule 60(b)(6) relief where the movant did not timely appeal
 the judgment sought to be vacated. And the district court
 did not treat Medinol’s failure to appeal the laches judg-
 ment as a per se bar to the Rule 60(b)(6) relief sought here.
 Rather, in accordance with our remand instruction, see Me-
 dinol II, 719 F. App’x at 1017, the district court weighed
 Medinol’s decision not to appeal along with the other as-
 serted factors in reaching its conclusion that extraordinary
 circumstances were not present. District Court Decision
 at *3 (identifying a plaintiff’s “‘lack of diligence in pursuing
 review’ [as] a factor mitigating the extraordinary nature of
 a case” (quoting Gonzalez, 545 U.S. at 537)).
     In Gonzalez, the Supreme Court affirmed the denial of
 Rule 60(b)(6) relief to a pro se prisoner seeking a certificate
 of appealability (COA) to challenge the dismissal of his pur-
 portedly untimely habeas corpus petition based on a post-
 judgment change of law regarding the interpretation of the
 federal habeas statute of limitations. 545 U.S. at 536–38.
 The Court held that the post-judgment change of law was
 not an extraordinary circumstance because Mr. Gonzalez
 displayed a “lack of diligence in pursuing review of the stat-
 ute-of-limitations issue” by failing to request rehearing
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 of—or seek certiorari for—the Eleventh Circuit’s denial of
 his COA, despite there being an active circuit conflict over
 the issue. Id. at 537 & n.10. The Court analogized to
 Ackermann v. United States, 340 U.S. 193, 195 (1950),
 where the Court also “affirmed the denial of Rule 60(b) re-
 lief, noting that the movant’s decision not to appeal had
 been free and voluntary,” although “it appear[ed] mistaken
 in hindsight.” Id. at 537–38.
     Medinol contends that Gonzalez “has no bearing on the
 issues here” because unlike Mr. Gonzalez, Medinol had “le-
 gitimate, appropriate, and completely sensible reasons for
 not pursuing what would have been an obviously futile ap-
 peal.” Appellant’s Br. 26. Medinol stresses that, during
 the time period for taking an appeal, it had no reason to
 suspect that our long-standing en banc decision endorsing
 laches as a defense to patent infringement, Aukerman, 960
 F.2d at 1029–32, might soon be overturned. Thus, Medinol
 says, it was error to construe its decision not to appeal as a
 lack of diligence.
     Initially, we question the wisdom of dismissing as in-
 significant a case we expressly identified in Medinol II as
 relevant to the “extraordinary circumstances” analysis.
 And although there may have been fewer indicators moti-
 vating Medinol to appeal its laches judgment here than
 were present in Gonzalez, the district court did not err by
 counting Medinol’s failure to appeal against it.
      As the district court noted, even before the 2014 laches
 judgment was rendered, Medinol recognized the potential
 significance of the Petrella laches-copyright infringement
 case that was being argued at the Supreme Court during
 the district court’s laches-patent infringement bench trial.
 Before that trial, Medinol alerted the court—in a footnote
 following a citation to Aukerman—that the anticipated Pet-
 rella decision “may have broad implications for the applica-
 bility of laches to other continuing torts, including patent
 infringement,” and it therefore reserved the right to argue
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 MEDINOL LTD.   v. CORDIS CORPORATION                        9



 that laches could not be applied to bar a legal claim for pa-
 tent infringement damages. J.A. 195 & n.1 (Medinol’s Pre-
 Trial Memorandum of Law). Medinol ultimately never as-
 serted that argument at trial, nor did it appeal from the
 final laches judgment. But throughout the window for di-
 rect appeal, Medinol remained aware—as it had been pre-
 judgment—that Petrella might undercut the foundation of
 the district court’s judgment. That Medinol freely and vol-
 untarily made the decision not to appeal, despite this
 awareness, can properly be viewed as a lack of diligence
 mitigating the claimed extraordinary nature of the case.
 See Ackermann, 340 U.S. at 198 (“There must be an end to
 litigation someday, and free, calculated, deliberate choices
 are not to be relieved from.”); Lazare Kaplan,
 714 F.3d at 1296 (noting that where Rule 60(b)(6) movants
 have “made a deliberate choice not to appeal or to pursue a
 particular litigation strategy, courts have found relief un-
 warranted,” and collecting Second Circuit cases); Cruick-
 shank & Co. v. Dutchess Shipping Co., 805 F.2d 465, 468
 (2d Cir. 1986) (“Failure to properly assess the risks and po-
 tential gains of taking an appeal is not an extraordinary
 circumstance      that    would     justify   relief   under
 [R]ule 60(b)(6).”).
      Medinol’s protestations of futility ring somewhat hol-
 low against the hindsight knowledge that, if it had directly
 appealed the laches judgment, the Supreme Court in all
 likelihood would have taken the opportunity to overrule
 Aukerman—as it ultimately did when SCA Hygiene ap-
 pealed its similar laches judgment—thereby providing Me-
 dinol the relief it has been seeking instead via Rule 60(b)(6)
 for the past six years. Cf. Stevens, 676 F.3d at 67 (prohib-
 iting Rule 60(b) motions as a substitute for direct appeal).
 Of course, we do not expect parties to foresee the future
 when deciding whether to appeal an adverse judgment. We
 simply conclude that there were enough reasons support-
 ing an appeal in this case for the district court to properly
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 10                       MEDINOL LTD.   v. CORDIS CORPORATION



 hold Medinol’s failure to appeal against it in the
 Rule 60(b)(6) analysis. 3
      Finally, the district court did not abuse its discretion in
 weighing this failure to appeal alongside the factors Medi-
 nol put forth as warranting relief from judgment. First, as
 Medinol readily acknowledges, “a change of law, in itself,
 does not constitute extraordinary circumstances.” Appel-
 lant’s Br. 20. See Tapper v. Hearn, 833 F.3d 166, 172
 (2d Cir. 2016) (“[A]s a general matter, a mere change in de-
 cisional law does not constitute an ‘extraordinary circum-
 stance’ for the purposes of Rule 60(b)(6)[.]” (first alteration
 in original) (quoting Marrero Pichardo v. Ashcroft, 374 F.3d
 46, 56 (2d Cir. 2004)); In re Terrorist Attacks, 741 F.3d
 at 357 (“Whenever the law changes, parties who lost a prior
 case because of the now-altered law may feel that justice
 was not done. Generally, the interest in finality outweighs
 that concern.”); see also Gonzalez, 545 U.S. at 536 (“It is
 hardly extraordinary that subsequently, after petitioner’s
 case was no longer pending, this Court arrived at a differ-
 ent interpretation[ of the statute at issue].”). The district
 court acted within its discretion in rejecting Medinol’s at-
 tempt to spin the Petrella / SCA Hygiene change of law as
 something more. That these decisions overturned our en
 banc precedent is hardly unique. And we decline to read
 these cases as especially significant because they rest on
 separation-of-powers principles. Although it is now clear
 that courts cannot entertain the equitable defense of laches
 to override congressionally established timeliness limits,
 see SCA Hygiene, 137 S. Ct. at 960; Petrella, 572 U.S.
 at 667, in April 2014 the district court acted perfectly
 within its authority by accepting a laches defense to



      3  We also reject as inapposite Medinol’s reliance on
 cases holding that a party does not forfeit its ability to chal-
 lenge controlling precedent in a direct appeal by not raising
 such a challenge in the district court.
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 MEDINOL LTD.   v. CORDIS CORPORATION                        11



 Medinol’s claims. That the district court could not permis-
 sibly render the same judgment today just reinforces that
 Medinol’s Rule 60(b)(6) request relies primarily on a mere
 post-judgment change of law.
      We also perceive no abuse of discretion in the district
 court’s rejection of the remaining factors Medinol asserted.
 We will not disturb the district court’s assessment of Medi-
 nol’s inability to try its claims on the merits and loss of op-
 portunity to recover large sums in damages as presenting
 a lesser injustice than in cases involving judicial bias, ra-
 cially tinged criminal convictions, or deportation conse-
 quences. See District Court Decision at *3.
                               III
     Because the district court did not abuse its discretion
 in deciding that Medinol’s Rule 60(b)(6) motion fails to set
 forth “extraordinary circumstances” justifying relief, we af-
 firm the judgment of the district court.
                         AFFIRMED
