
USCA1 Opinion

	




          December 28, 1995     [NOT FOR PUBLICATION]                            United States Court of Appeals                            United States Court of Appeals                                For the First Circuit                                For the First Circuit                                 ____________________        No. 95-1793                         IN RE: BORLAND INTERNATIONAL, INC.,                                     Petitioner,                                _____________________        No. 95-1885                                  LOTUS DEVELOPMENT,                                Plaintiff, Appellee,,                                          v.                             BORLAND INTERNATIONAL, INC.,                                Defendant, Appellant.                                 ____________________                     APPEAL FROM THE UNITED STATES DISTRICT COURT                 FOR THE DISTRICT OF MASSACHUSETTS CONSOLIDATED WITH                            PETITION FOR WRIT OF MANDAMUS                   [Hon. Douglas P. Woodlock, U.S. District Judge]                                              ___________________                                 ____________________                                        Before                                Torruella, Chief Judge,                                           ___________                          Boudin and Stahl, Circuit Judges.                                            ______________                                 ____________________            Steven  Brower with  whom  Joel D.  Covelman,  Ginsburg,  Stephan,            ______________             _________________   ___________________        Oringher  &  Richman,  Peter  E.  Gelhaar,  Katherine  L.  Parks,  and        ____________________   __________________   ____________________        Donnelly, Conroy & Gelhaar were on brief for appellant/petitioner.        __________________________            Henry B.  Gutman with  whom Kerry  L. Konrad,  Jeffrey E.  Ostrow,            ________________            ________________   __________________        Lori E.  Lesser, Baker & Botts, L.L.P., Thomas M. Lemberg and Hale and        _______________  _____________________  _________________     ________        Dorr were on brief for appellee/respondent.        ____                                _____________________                                _____________________                      STAHL,  Circuit  Judge.     Although  the   pitched                      STAHL,  Circuit  Judge.                              ______________            software copyright  battle  between Lotus  Development  Corp.            ("Lotus") and Borland International, Inc. ("Borland") is  now            before  the  Supreme  Court,  Borland seeks  to  reverse  two            district court orders, either  by appeal or by mandamus.   We            defer our decision on the appeal for prudential  reasons, and            deny the petition for a writ of mandamus.                                           I.                                          I.                                          __                                      BACKGROUND                                      BACKGROUND                                      __________                      Lotus  has  waged a  protracted  litigation against            Borland, alleging that Borland infringed Lotus's copyright in            "Lotus 1-2-3",  a popular  and extremely successful  computer            spreadsheet program.  See Lotus Dev. Corp. v. Borland  Int'l,                                  ___ ________________    _______________            Inc.,  49 F.3d 807, 809 (1st Cir. 1995) (citing four district            ____            court  decisions in this case).   In 1993,  the United States            District Court  for the District of  Massachusetts ruled that            Borland  had copied  Lotus  1-2-3's menu  command hierarchy;1            accordingly, the court entered a permanent injunction against            Borland.  Lotus  Dev. Corp.  v. Borland Int'l,  Inc., 831  F.                      _________________     ____________________            Supp. 223, 245 (D. Mass. 1993).                                            ____________________            1.  The menu command hierarchy  is the 1-2-3 program's system            of operating commands (e.g.,  "Open"; "Save"; "Delete")  that            are  arranged  in a  linked  hierarchy of  command  menus and            submenus.   Each  menu is  a list  of commands  displayed on-            screen.  The user selects a command by highlighting it on the            menu or typing its first letter.                                         -2-                                          2                      Borland  appealed the  infringement ruling  and the            injunction.  By the time  of that appeal,  the district court            proceedings  had narrowed  the  copyright claim  to Borland's            alleged infringement  of the  menu command hierarchy.   Lotus            did  not contend on appeal  that the district  court erred in            finding that  Borland had not  copied any  other elements  of            Lotus 1-2-3.   In March 1995, this court  ruled that the menu            command hierarchy of Lotus 1-2-3 was a  "method of operation"            not protectible  by copyright,  as provided  in  17 U.S.C.               102(b), reversing the judgment of the  district court.  Lotus                                                                    _____            Dev.  Corp. v.  Borland Int'l,  Inc., 49  F.3d 807  (1st Cir.            ___________     ____________________            1995).                      Lotus  filed a  petition  for  certiorari with  the            United States  Supreme Court.  While  the certiorari petition            was pending,  Borland filed a  motion in  the district  court            seeking the  entry of  final judgment  in its favor,  arguing            that  our opinion had  rejected the only  remaining basis for            Lotus's  case.   Lotus countered  with a  motion to  stay all            further  proceedings until  the Supreme  Court  either denied            certiorari  or  ruled  on the  merits  of  the  appeal.   The            district court denied Borland's  motion to enter judgment and            granted the  stay that Lotus requested, noting  in the margin            that "the  pendency of the  petition for writ  of certiorari,            which  raises  issues   sufficiently  meritorious  to  permit            further judicial  review[,] coupled  with the absence  of any                                         -3-                                          3            cognizable  harm  to the  defendant  during  the pendency  of            certiorari   proceedings[,]   counsels  against   further  --            potentially unnecessary  -- proceedings in  this court  until            the petition is resolved."                      Borland now appeals the district court's refusal to            enter  final judgment  and  its grant  of  a stay  until  the            Supreme Court decided Lotus's appeal.  Apparently recognizing            that  this  court  might  find  these  to  be  non-appealable            interlocutory orders, Borland seeks in the alternative a writ            of mandamus  directing the  district court to  enter judgment            and  to dissolve  its  stay order.    While this  appeal  and            petition were  pending, the Supreme Court granted certiorari,            Lotus Dev. Corp. v. Borland Int'l, Inc., 116 S. Ct. 39 (Sept.            ________________    ___________________            27, 1995), and scheduled arguments for January 1996.                                         II.                                         II.                                         ___                                   BORLAND'S APPEAL                                   BORLAND'S APPEAL                                   ________________                      Borland appeals the district court's orders denying            Borland's motion  to  enter  judgment  and  granting  Lotus's            motion for a stay of proceedings.  We have significant doubts            as  to  our jurisdiction  because  the  orders appealed  from            appear to  be neither  "final decisions" reviewable  under 28            U.S.C.   1291 nor  appealable interlocutory orders under  the            "collateral order"  doctrine  of Cohen  v. Beneficial  Indus.                                             _____     __________________            Loan Corp,  337 U.S. 541  (1949).  Our  jurisdictional doubts            _________            notwithstanding,   we  believe  the  wisest  course  at  this                                         -4-                                          4            juncture  is  to defer  our  decision  on the  jurisdictional            questions and  the merits  until the Supreme  Court announces            its decision in this case.   See, e.g., Glater v. Eli Lilly &                                         ___  ____  ______    ___________            Co.,  744 F.2d  213, 214 (1st  Cir. 1984)  (decision deferred            ___            until Supreme Court decides  key issue in another case).   We            recognize that this appeal  will almost certainly become moot            when the Supreme Court rules, but that fact counsels against,            not  for,  our  deciding the  appeal  now.    Thus, we  defer            decision on this appeal until the Supreme Court announces its            decision in this case.                                         III.                                         III.                                         ____                       BORLAND'S PETITION FOR WRIT OF MANDAMUS                       BORLAND'S PETITION FOR WRIT OF MANDAMUS                       _______________________________________                      Federal  appellate  courts are  empowered  to issue            prerogative writs  that are "necessary or  appropriate in aid            of their respective jurisdictions,"  28 U.S.C.   1651(a), but            that power must be  used stintingly and brought to  bear only            in  extraordinary situations.    Doughty v.  Underwriters  at                                             _______     ________________            Lloyd's,  London, 6  F.3d  856, 865  (1st  Cir. 1993).    The            ________________            standards  for issuance of the  writ of mandamus  are high: a            petitioner  must  show  both  that the  challenged  order  is            palpably erroneous  and that  he faces  some special  risk of            irreparable  harm.  In re  Cargill, Inc., 66  F.3d 1256, 1260                                ____________________            (1st Cir. 1995); United States v. Horn, 29 F.3d 754, 769 (1st                             _____________    ____            Cir. 1993); Doughty, 6 F.3d at 865.  And, even these showings                        _______            do  not  necessarily require  a court's  use  of the  writ of                                         -5-                                          5            mandamus, which, as an  exceptional remedy, is to  be granted            only in the exercise  of sound discretion.  Cargill,  66 F.3d                                                        _______            at 1260.                      This petition does  not present the  combination of            palpable  error  and  irreparable harm  necessary  to justify            mandamus.   As  to  the  district court's  refusal  to  enter            judgment for Borland,  we note that our mandate directed only            that  the judgment for Lotus be reversed.  The district court            complied by vacating the  injunction.  We did not  direct the            entry of judgment for Borland; although  that result might be            expected to follow  in due  course, this is  not a  situation            where the court below has ignored our clear mandate.                      As to  the stay, it would be a poor use of judicial            resources  to conduct  further  proceedings  in the  district            court at this time, given that the Supreme Court is  about to            hear  Lotus's  appeal.    Whatever  Borland's  concern  about            interest on an attorney fee award, the decision when to enter            judgment  in a  case where  the Supreme  Court has  agreed to            review the appeals  court's own decision  is obviously not  a            candidate for mandamus.                                         IV.                                         IV.                                         ___                                      CONCLUSION                                      CONCLUSION                                      __________                      For the foregoing reasons, we defer our decision in            Borland's appeal, No. 95-1885, and we deny Borland's petition            for a writ of mandamus, No. 95-1793.                                         -6-                                          6                      Petition for writ of mandamus denied.   No costs to                      Petition for writ of mandamus denied.   No costs to                      _____________________________________   ___________            either party.            either party.            _____________                                         -7-                                          7
