  United States Court of Appeals
      for the Federal Circuit
                ______________________

                    EPLUS, INC.,
                   Plaintiff-Appellee

                           v.

            LAWSON SOFTWARE, INC.,
               Defendant-Appellant
              ______________________

                 2013-1506, 2013-1587
                ______________________

   Appeals from the United States District Court for the
Eastern District of Virginia in No. 09-CV-0620, Senior
Judge Robert E. Payne.
                ______________________

                Decided: June 18, 2015
                ______________________

    MICHAEL GAVIN STRAPP, Goodwin Procter LLP, Bos-
ton, MA, argued for plaintiff-appellee. Also represented
by JENNIFER A. ALBERT, DAVID M. YOUNG, Washington,
DC.

    MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP,
Washington, DC, argued for defendant-appellant. Also
represented by BLAINE H. EVANSON, Los Angeles, CA;
JOSH KREVITT, DANIEL J. THOMASCH, RICHARD MARK, New
York, NY; ERIKA ARNER, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Reston, VA; DONALD ROBERT
DUNNER, Washington, DC.
2                        EPLUS, INC.   v. LAWSON SOFTWARE, INC.



                    ______________________

    Before, PROST, Chief Judge, ∗ DYK and O’MALLEY, Cir-
                      cuit Judges.
         Opinion for the court filed by Circuit Judge DYK.
        Dissenting opinion filed by Circuit Judge O’MALLEY.
DYK, Circuit Judge.
     ePlus, Inc. (“ePlus”), the assignee of U.S. Patent Nos.
6,023,683 (the “’683 patent”) and 6,505,172 (the “’172
patent”), sued Lawson Software, Inc. (“Lawson”) for
infringement. The district court found two of the asserted
system claims and three of the asserted method claims
not invalid, and a jury found that Lawson infringed those
claims. In an earlier appeal, we reversed in part on the
ground that the system claims were invalid and that two
of the asserted method claims were not infringed. We
affirmed only the infringement verdict as to one method
claim—claim 26—of the ’683 patent. We remanded to the
district court to make necessary modifications to the
injunction.
    On remand, the district court modified the injunction
in one respect and found Lawson in civil contempt for
violating the injunction. Lawson appealed both the in-
junction and contempt order. During the pendency of
Lawson’s appeals, the United States Patent and Trade-
mark Office (“PTO”) completed a reexamination of the
’683 patent and determined that claim 26 was invalid. In
a separate appeal, we affirmed the PTO’s invalidity
determination, and the PTO cancelled claim 26. We now
vacate the injunction and contempt order because both



    ∗
       Sharon Prost assumed the position of Chief Judge
on May 31, 2014.
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                    3



were based on claim 26, which the PTO has now can-
celled.
                         BACKGROUND
    This case raises two issues. The first is whether an in-
junction can continue after the PTO has cancelled the
only claim on which the injunction was based. The second
is whether civil contempt remedies based on the violation
of an injunction are appropriate when the injunction has
been overturned on direct appeal.
                               I
     ePlus owns the ’172 patent and the ’683 patent, which
both relate to methods and systems for electronic sourc-
ing. See ePlus, Inc. v. Lawson Software, Inc., 700 F.3d
509, 512 (Fed. Cir. 2012) (“ePlus I”). The claimed methods
and systems are directed to using electronic databases to
search for product information and ordering selected
products from third-party vendors. The only claim now at
issue in this appeal, claim 26 of the ’683 patent, recites a
“method comprising the steps of”: “maintaining at least
two product catalogs on a database,” “selecting product
catalogs to search,” “searching for matching items,”
“building a requisition,” “processing the requisition to
generate one or more purchase orders,” and “determining
whether a selected matching item is available in invento-
ry.” ’683 patent col. 26 l. 61–col. 27 l. 7.
    In 2009, ePlus sued Lawson for infringement of the
’683 patent and the ’172 patent in the Eastern District of
Virginia. 1 Lawson sells computer software to institutional
customers. Its products are modular—customers decide


    1   ePlus also alleged infringement of certain claims
of U.S. Patent No. 6,055,516. The jury found none of those
claims infringed, and ePlus did not appeal that aspect of
the jury verdict.
4                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



which individual software components to purchase based
on their needs. As a result, different customers use differ-
ent combinations, or configurations, of software modules.
The different configurations generally let users search for,
select, and order products electronically, but the nature
and extent of those capabilities vary depending on the
particular modules a customer selects. When ePlus sued
Lawson, the basic software component (“Core Procure-
ment”) allowed users to load products into an internal
database (“Item Master”), search that database for prod-
ucts, create a requisition listing multiple selected prod-
ucts, and generate individual purchase orders to transmit
to vendors. Requisition Self-Service (“RSS”) was a module
that provided a user interface for the Core Procurement
unit. The Procurement Punchout module (“Punchout”) let
users search third-party vendors’ databases for products
and put those vendors’ products on requisitions along
with products stored in the internal Item Master data-
base.
    Given the modular nature of Lawson’s products, ePlus
asserted different patent claims against five distinct
configurations of software modules (“Configurations 1–5”).
With respect to the asserted claims of the ’683 patent and
the ’172 patent, the jury found that three of the five
accused configurations infringed. Configurations 3 and 5
were found to infringe two system claims (claim 1 of the
’172 patent and claim 3 of the ’683 patent) and three
method claims (claims 26, 28, and 29 of the ’683 patent).
Configuration 2 was found to infringe one system claim
(claim 1 of the ’172 patent). Configurations 1 and 4 were
found not to infringe any of the claims asserted against
them.
   Pursuant to the jury verdicts, the district court per-
manently enjoined Lawson from
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                     5



    directly or indirectly making, using, offering to
    sell, or selling within the United States or import-
    ing into the United States any of the [adjudged in-
    fringing]      product     configurations     and/or
    installation, implementation, design, configura-
    tion, consulting, upgrade, maintenance and sup-
    port and training and other related and associated
    services and any colorable variations thereof (the
    “Infringing Products and Services”).
J.A. 4263. The court defined the “Infringing Products and
Services” to include the three software configurations
(Configurations 2, 3, and 5) adjudged infringing by the
jury. The court also enjoined Lawson from “[c]irculating,
publishing or disseminating within the United States any
literature or information that encourages the use, sale or
importation of any of the Infringing Products and Ser-
vices,” and from “[a]iding and abetting, actively inducing,
or in any way contributing to the making, use, sale or
importation of any of the Infringing Products and Ser-
vices.” J.A. 4264. Lawson appealed.
    On this first appeal, we determined that the two
asserted system claims (claim 1 of the ’172 patent and
claim 3 of the ’683 patent) were invalid, and that two of
the three asserted method claims (claims 28 and 29 of the
’683 patent) were not infringed. We affirmed only the
infringement finding as to method claim 26. Only Config-
urations 3 and 5 were found to infringe that claim. As a
result of our holding on appeal, Configuration 2 was no
longer infringing. We remanded “for the district court to
consider what changes are required to the terms of the
injunction, consistent with this opinion.” ePlus I, 700 F.3d
at 523.
     After our ruling, the district court ordered the parties
to file statements of position on the effect of our decision
on the injunction. These were filed before Lawson’s Rule
60(b) motion discussed below. Most importantly, Lawson
6                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



challenged the very provisions of the injunction that led to
the contempt sanctions sought by ePlus—namely, the bar
against sales of particular software products. Originally,
these provisions concerning software sales were supported
by the jury’s findings of infringement of the system claims
(claim 1 of the ’172 patent and claim 3 of the ’683 pa-
tent). 2 After our decision vacated those findings, Lawson
argued that infringement of a single method claim (claim
26 of the ’683 patent) could not support the injunction
against product sales (and hence, contempt sanctions
based on such sales) and that our opinion distinguished
“sales” of software from “installation” and other services
provided to customers. 3 This court upheld the finding of
induced infringement of claim 26 not based on sales, but
based on Lawson’s providing customer services, including
software installation, demonstrations, and maintenance. 4



    2   In sustaining the jury verdict, the district court
relied on the determination that “Lawson actively induces
its customers’ direct infringement by selling and offering
to sell the infringing systems with the intent that its
customers use those systems in an infringing manner.”
ePlus, Inc. v. Lawson Software, Inc., No. 3:09-cv-620, 2011
WL 3584313, at *4 (E.D.V.A., Aug. 12, 2011). We did not
sustain the finding of infringement of the system claims
or the findings of direct and induced infringement based
on the sales of the systems.
     3  We recognized that “[i]n addition to selling pro-
curement software, Lawson provides services to custom-
ers who purchase its products. These services may include
installation and maintenance of the products.” ePlus I,
700 F.3d at 514.
     4  We relied on “evidence that Lawson installed,
maintained, demonstrated and managed the infringing
systems for its customers” to conclude that a reasonable
jury could “infer that Lawson performed the steps of claim
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                    7



Lawson also urged that, in light of this court’s narrowing
of the jury’s infringement findings, the enjoined software
products were capable of significant non-infringing uses
and sales of such software should not be enjoined. Addi-
tionally, Lawson argued that under eBay Inc. v. Mer-
cExchange, L.L.C., 547 U.S. 388 (2006), the balancing of
equities no longer supported any injunction. ePlus argued
that the only modification required was the removal of
Configuration 2 from the list of enjoined products. Lawson
thereafter filed a Rule 60(b) motion to modify the injunc-
tion.
     The district court agreed with ePlus’s position and or-
dered that the injunction be “modified by deleting from its
scope the product . . . colloquially known as ‘Configuration
2,’” and “remain in effect in all other respects.” J.A. 1.
    On remand, in addition to reconsidering the injunc-
tion, the district court also instituted contempt proceed-
ings. Following the jury verdicts, Lawson had
decommissioned and stopped selling products with RSS,
the user interface module for Core Procurement, the basic
building block of Lawson’s system. Lawson had also
redesigned its software in two pertinent respects. First, it
redesigned Configurations 3 and 5 by developing a new
module, Requisition Center (“RQC”) to replace the RSS
user interface module. As redesigned, RQC prevented a
user from simultaneously putting items from both the
internal Item Master database and a third-party vendor’s
database (accessible via Punchout) on the same requisi-
tion. Second, Lawson redesigned Configurations 3 and 5
by developing downloadable software (“Patch 1”) that
limited the functionality of Punchout in Configurations 3
and 5. As modified by Patch 1, those configurations no
longer allowed users to put items from multiple third-


26” and “induced its customers to infringe claim 26.” Id.
at 521.
8                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



party vendors on the same requisition when using Pun-
chout. As a result, users could only build requisitions with
products from the internal Item Master database or from
a single third-party database.
    ePlus alleged that Lawson was in contempt for violat-
ing the injunction with respect to the redesigned software,
arguing that the changes did not make the software more
than colorably different from Configurations 3 and 5, and
that the redesigned software infringed claim 26. Lawson
argued that it was not violating the injunction because
the redesigned software was more than colorably different
from the originally accused software and that ePlus could
not show that the redesigned software continued to in-
fringe claim 26. The court held Lawson in contempt for
violating the injunction, finding that the redesigned
products were no more than colorably different and in-
fringed. The court ordered Lawson to pay a compensatory
fine of $18,167,950 and coercive daily fines of $62,362
until it could show compliance with the injunction. It
declined to award enhanced damages or attorneys’ fees.
Lawson appealed the district court’s modified injunction
and contempt order. We stayed the accumulation of fines
during the pendency of the appeals.
    While Lawson’s appeals were pending, in another
case, we affirmed the PTO’s reexamination decision
invalidating claim 26 of the ’683 patent. In re ePlus, Inc.,
540 F. App’x 998 (Fed. Cir. 2013) (per curiam). Our man-
date issued, and the PTO cancelled claim 26 in April
2014.
    We have jurisdiction over the appeal of the injunction
pursuant to 28 U.S.C. § 1292(a)(1) & (c)(1) and over the
appeal of the contempt order pursuant to 28 U.S.C § 1291.
We review a grant, denial, or modification of an injunction
in a patent case for abuse of discretion. Int’l Rectifier
Corp. v. Samsung Elecs. Co., 361 F.3d 1355, 1359 (Fed.
Cir. 2004) (citing Carborundum Co. v. Molten Metal
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                     9



Equip. Innovations, Inc., 72 F.3d 872, 881 (Fed. Cir.
1995)). We review a contempt order based on an injunc-
tion against infringement for abuse of discretion. Merial
Ltd. v. Cipla Ltd., 681 F.3d 1283, 1292 (Fed. Cir. 2012)
(citing Fujifilm Corp. v. Benun, 605 F.3d 1366, 1370 (Fed.
Cir. 2010)).
                          DISCUSSION
                         I. Injunction
     The first question is whether the district court’s modi-
fied injunction against Lawson must be set aside now that
the PTO has cancelled the patent claim on which it is
based. It is well established that an injunction must be
set aside when the legal basis for it has ceased to exist. In
Pennsylvania v. Wheeling & Belmont Bridge Co., 54 U.S.
(13 How.) 518, 577–79 (1851), the Supreme Court ap-
proved an injunction sought by the state of Pennsylvania,
ordering the removal of a bridge across the Ohio River
because it illegally obstructed navigation. Congress
subsequently enacted a law authorizing the bridge. Penn-
sylvania v. Wheeling & Belmont Bridge Co., 59 U.S. (18
How.) 421, 422 (1855) (“Wheeling Bridge”). Pennsylvania
requested that the Court execute its decree ordering the
abatement of the bridge and punish the defendants for
contempt for violating the Court’s order by failing to
remove the bridge. Id. at 427. The Court denied the
motions and instead dissolved the injunction because
“there [wa]s no longer any interference with the enjoy-
ment of the public right inconsistent with law.” Id. at 432.
The Court held that an injunction “is executory, a contin-
uing decree . . . . If, in the mean[]time, since the decree,
this right has been modified by the competent authori-
ty . . . it is quite plain the decree of the court cannot be
enforced.” Id. at 431–32. Because the bridge was no longer
unlawful, the Court had to set aside the previous order
rather than enforce it.
10                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



    “The principles of the Wheeling Bridge case have re-
peatedly been followed” by the Supreme Court as well as
“by lower federal and state courts.” Sys. Fed’n No. 91, Ry.
Emps.’ Dep’t v. Wright, 364 U.S. 642, 650–52 (1961)
(holding that it is an abuse of discretion not to modify an
injunction when, because of a change in the law, “[t]he
parties have no power to require of the court continuing
enforcement of rights the statute no longer gives”); see
also, e.g., Cobell v. Norton, 392 F.3d 461, 467 (D.C. Cir.
2004) (vacating injunction where subsequently enacted
legislation relieved executive department of duties re-
quired by injunction because “an injunction may be a final
judgment for purposes of appeal, [but] it is not the last
word of the judicial department because any provision of
prospective relief is subject to the continuing supervisory
jurisdiction of the court, and therefore may be altered
according to subsequent changes in the law” (quoting
Nat’l Coal. to Save Our Mall v. Norton, 269 F.3d 1092,
1096–97 (D.C. Cir. 2001) (internal quotation marks omit-
ted in original) (quoting Miller v. French, 530 U.S. 327,
347 (2000)))); Biodiversity Assocs. v. Cables, 357 F.3d
1152, 1169–70 (10th Cir. 2004) (injunction arising from
settlement agreement “must give way” because it was
inconsistent with new legislation); Imprisoned Citizens
Union v. Ridge, 169 F.3d 178, 184 (3d Cir. 1999) (“Wheel-
ing Bridge therefore stands for the proposition that when
Congress changes the law underlying a judgment award-
ing prospective injunctive relief, the judgment becomes
void to the extent that it is inconsistent with the amended
law.”).
    Those principles reflect the fact that “[a] continuing
decree of injunction directed to events to come is subject
always to adaptation as events may shape the
need. . . . [A] court does not abdicate its power to revoke or
modify its mandate, if satisfied that what it has been
doing has been turned through changing circumstances
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                  11



into an instrument of wrong.” United States v. Swift &
Co., 286 U.S. 106, 114–15 (1932); see also Salazar v.
Buono, 559 U.S. 700, 718 (2010) (“Where legislative action
has undermined the basis upon which relief has previous-
ly been granted, a court must consider whether the origi-
nal finding of wrongdoing continues to justify the court's
intervention.” (citing Wright, 364 U.S. at 648–49 and
Wheeling Bridge, 59 U.S. at 430–32)).
     Our court has applied these principles to an injunc-
tion barring infringement of patents later found to be
invalid. Mendenhall v. Barber-Greene Co., 26 F.3d 1573,
1584 (Fed. Cir. 1994). In Mendenhall, we reviewed injunc-
tions based on findings of patent infringement. Id. at
1576. While those injunctions were pending on appeal, the
same patents were held invalid in another case in our
court. Id. at 1576–77. We held that the injunctions had to
be reversed following the final judgment of patent invalid-
ity. Id. at 1584. We recognized that upholding injunctions
would be “anomalous in the extreme in connection with
patents this court has just held invalid.” Id. at 1578.
    Under these authorities, there is no longer any legal
basis to enjoin Lawson’s conduct based on rights that
claim 26 of the ’683 patent previously conferred as those
rights have ceased to exist. The PTO found claim 26
invalid, we affirmed that decision, our mandate issued,
and the PTO cancelled the claim. Claim 26 no longer
confers any rights that support an injunction against
infringement. During oral argument, ePlus even admitted
that there could be no injunction moving forward. The
PTO’s cancellation of claim 26 requires that we now
vacate the injunction.
                 II. Civil Contempt Remedies
     The second question is whether the civil contempt
sanctions should be set aside. It is well established that
“[v]iolations of an order are punishable as crimi-
12                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



nal contempt even though the order is set aside on ap-
peal . . . or though the basic action has become
moot.” United States v. United Mine Workers of Am., 330
U.S. 258, 294 & n.60 (1947) (citing Worden v. Searls, 121
U.S. 14 (1887); Gompers v. Buck’s Stove & Range Co., 221
U.S. 418 (1911)); see also Walker v. Birmingham, 388 U.S.
307, 319 (1967) (upholding criminal contempt sentences
for violation of injunction regardless of the validity of the
injunction); Howat v. Kansas, 258 U.S. 181, 189–90 (1922)
(criminal contempt sentences do not depend on constitu-
tionality of law on which injunction is based). If Lawson
had been found guilty of criminal contempt, that order
and any resulting penalties would not be set aside simply
because claim 26 had been cancelled.
     However, the district court found Lawson in civil, not
criminal, contempt. It awarded “compensation” to ePlus
for economic injury during the period that the injunction
was in effect, based on the Supreme Court decision in
Leman v. Krentler-Arnold Hinge Last Co., 284 U.S. 448
(1932). In Leman, the Court upheld an award of the
infringer’s profits “not by way of punishment but to insure
full compensation.” Id. at 456. 5 The rule for civil contempt
for violating a provision of an injunction that is not final,
i.e., that is still subject to litigation over the propriety of
its issuance, is that “[t]he right to remedial relief falls
with an injunction which events prove was erroneously
issued.” United Mine Workers, 330 U.S. at 295 (citing
Worden, 121 U.S. at 25–26; Salvage Process Corp. v. Acme
Tank Cleaning Process Corp., 86 F.2d 727, 727 (2d Cir.
1936); S. Anargyros v. Anargyros & Co., 191 F. 208


     5  The district court also ordered coercive sanctions.
We stayed these sanctions pending the resolution of this
appeal. There is no question that ePlus is not entitled to
seek coercive sanctions now that the injunction has been
vacated.
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                     13



(C.C.D. Cal. 1911)). The Supreme Court distinguished
civil from criminal contempt, explaining that:
    It does not follow, of course, that simply because a
    defendant may be punished for crimi-
    nal contempt for disobedience of an order later set
    aside on appeal, that the plaintiff in the action
    may profit by way of a fine imposed in a simulta-
    neous proceeding for civil contempt based upon a
    violation of the same order.
Id. at 294–95. The Court explained that if the non-final
injunction at issue (a temporary restraining order) had
been overturned, “the conviction for civil contempt would
be reversed in its entirety.” Id. at 295. “[A party’s] right,
as a civil litigant, to the [civil] compensatory fine is de-
pendent upon the outcome of the basic controversy.” Id. at
304. Civil contempt sanctions must be set aside when the
resolution of the case requires overturning the injunction
on which those sanctions are based.
     The Supreme Court has specifically applied this rule
to set aside civil contempt sanctions imposed for violating
an injunction based on patents found to be invalid on
appeal of the (non-final) injunction. Worden, 121 U.S at
26. 6 In Worden, the district court had declared the patent



    6    Curiously, the dissent now finds Worden inappli-
cable to this situation, Diss. Op. at 14 n.5, after previously
urging in Fresenius that Worden required the reversal of
contempt sanctions in such situations. Judge O’Malley, in
dissenting from the denial of en banc rehearing in Frese-
nius, stated: “[Worden] merely stands for the proposition
that the right to fines for violation of a preliminary in-
junction is founded on that injunction which in turn is
predicated on the validity of the patent.” Fresenius USA,
Inc. v. Baxter Int’l, Inc., 733 F.3d 1369, 1376 n.5 (Fed. Cir.
14                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



not invalid, found the defendants liable for infringement,
and ordered a permanent injunction. Id. at 19. The court
also found the defendants in contempt of its preliminary
injunction and ordered them to pay fines for civil con-
tempt. Id. at 20. The defendants appealed the court’s
rulings on infringement and validity, as well as the con-
tempt order and resulting fines. Id. at 20, 24. On appeal,
the Supreme Court found the patent invalid and, on that
basis, vacated the injunction. Id. at 25. Because the Court
found the patent invalid, id. at 24, and reversed the
injunction on appeal, id. at 26, it set aside the civil con-
tempt order and resulting fines, declaring that the sanc-
tions “cannot be upheld.” Id. The Court explained that the
civil sanctions were “incidents of [the patentee’s] claims in
the suit. His right to them was, if it existed at all, founded
on his right to the injunction, and that was founded on
the validity of his patent.” Id. at 25. Under Worden,
compensatory civil contempt remedies for violating a
provision of an injunction that is still subject to litigation
over its issuance must be set aside when the injunction is
reversed because the patent is determined to be invalid. 7




2013) (dissenting from the denial of the petition for re-
hearing en banc) (citing Worden, 121 U.S. at 25).
    7   ePlus claims that some cases it cites have reached
contrary results, but those cases involve situations where
the basis for the injunction was eliminated prospectively
only, see, e.g., Klett v. Pim, 965 F.2d 587, 590 (8th Cir.
1992) (passage of Agricultural Credit Act made injunction
moot, not baseless); Coleman v. Espy, 986 F.2d 1184, 1190
(8th Cir. 1993) (citing Klett, 965 F.2d at 590) (same), or
penalties that were not determined to be civil, see, e.g.,
Cassidy v. Puett Elec. Starting Gate Corp., 182 F.2d 604,
608 (4th Cir. 1950) (district court ordered penalties “to
punish those who have deliberately and without any
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                     15



Other circuits have similarly held that civil contempt
sanctions must be set aside if the underlying non-final
injunction is reversed on appeal. 8
    This case is not distinguishable on the ground that
the basis for the injunction has been removed as the
result of the PTO proceeding rather than a court judg-
ment. In Fresenius USA, Inc. v. Baxter International, Inc.,
we held that a non-final money judgment of damages for



reasonable excuse disobeyed [its] orders” (internal quota-
tion marks omitted)).
      8   “The general rule is that whether a contempt
judgment survives the avoidance of an underlying order
depends on the nature of the contempt decree. If the
contempt is criminal it stands; if it is civil it falls.”
LaTrobe Steel Co. v. United Steelworkers of Am., 545 F.2d
1336, 1342, 1347–48 (3d Cir. 1976) (vacating coercive civil
contempt order because “reversal of the underlying in-
junction indicates that the complainant never had a valid
right which was enforceable against the defendant”); see
also e.g., McLean v. Cent. States, S. & S. Areas Pension
Fund, 762 F.2d 1204, 1210 (4th Cir. 1985) (ordering
“reversal of the contempt order because [the appellant]
has prevailed in overturning the [underlying] order on
appeal.”); Scott & Fetzer Co. v. Dile, 643 F.2d 670, 675
(9th Cir. 1981) (remedial civil contempt judgment “must
fall as a result of our decision invalidating the underlying
injunction”); ITT Comm. Dev. Corp. v. Barton, 569 F.2d
1351, 1361 (5th Cir. 1978) (vacating contempt orders
because the underlying turn-over order “was invalid ab
initio”); Blaylock v. Cheker Oil Co., 547 F.2d 962, 966 (6th
Cir. 1976) (concluding that “the remedial contempt order
. . . falls with [the relevant provision] of the injunction”).
All of these cases involved orders whose merits were still
subject to review when the civil contempt sanctions were
reviewed.
16                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



infringement must be set aside where the judgment
rested on a patent claim that the PTO later cancelled. 721
F.3d 1330, 1344, 1347 (Fed. Cir. 2013). 9 We held that the
cancellation of a patent requires that non-final judgments
be set aside because the “cancelled claims [a]re void ab
initio,” id. at 1346, relying on Moffit v. Garr, 66 U.S. 273,
283 (1861), where the Supreme Court held that “unless
[the patent] exists, and is in force at the time of trial and
judgment, the suits fail.” Id. at 1345 (quoting Moffit, 66
U.S. at 283). Thus, the cancellation of the patent preclud-
ed the patentee from recovering damages in Fresenius.
Similarly, here the civil contempt sanctions must be set
aside.
    This case does not require us to decide whether civil
contempt sanctions would survive if the injunction had
been final at the time the district court imposed civil
contempt sanctions. 10 The injunction here was not final
even though claim 26 had been held infringed. We go no
further than we did in Fresenius in deciding this case.
    We held in Fresenius that even if this court has re-
jected an invalidity defense to infringement, an “interven-



     9   The Supreme Court denied the petition for certio-
rari on May 19, 2014. Baxter, Int’l, Inc. v. Fresenius USA,
Inc., 134 S. Ct. 2295 (2014).
    10   See, e.g., Maggio v. Zeitz, 333 U.S. 56, 68 (1948)
(reviewing contempt order, but not underlying order
requiring turnover of property because “the turnover
proceeding is a separate one, and when completed and
terminated in a final order, it becomes res judicata and
not subject to collateral attack in the contempt proceed-
ings”); Proveris Scientific Corp. v. Innovasystems, Inc., 739
F.3d 1367, 1370, 1374 (Fed. Cir. 2014) (holding defendant
cannot raise invalidity as a defense to contempt when the
underlying injunction is final and not on appeal).
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                   17



ing decision invalidating the patents unquestionably
applies” as long as “the judgment in [the present] litiga-
tion is not final.” Id. at 1344; see also Moffit, 66 U.S. at
283 (“[P]ending suits fall with the surrender” of a patent
“which, in judgment of law, extinguishes the patent.”);
Mendenhall, 26 F.3d at 1584 (“Because the Mendenhall
patents are invalid, the plaintiffs cannot now enjoin or
recover damages from these defendants.”). In Fresenius,
we had previously reviewed the district court’s rulings on
infringement and invalidity and remanded the case to the
district court to determine the scope of damages and
injunctive relief. 721 F.3d at 1333. When reviewing the
judgment reached by the district court on remand, we
held that the original district court judgment, while “final
for purposes of appeal . . . was not sufficiently final to
preclude application of the intervening judgment” that led
to the cancellation of the patent. Id. at 1340. With respect
to the determination of finality, we explained that “where
the scope of relief remains to be determined, there is no
final judgment binding the parties (or the court).” Id. at
1341. We relied on the Supreme Court’s holding that “a
final decree [is] one that finally adjudicates upon the
entire merits, leaving nothing further to be done except
the execution of it.” John Simmons Co. v. Grier Bros. Co.,
258 U.S. 82, 88 (1922).
    At the time of the original injunction here, the jury
had found two system claims and three method claims
infringed. The injunction did not tie specific enjoined
activities or products to specific claims that had been
found infringed. Indeed, it did not even mention any of
the five claims that were found to be infringed. On its
face, our invalidation of the two system claims and our
holding that method claims 28 and 29 were not infringed,
see ePlus I, 700 F.3d at 520–22, resulted in a substantial
question as to the appropriate scope of the injunction. The
question was whether the one method claim we sustained
18                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



(claim 26) was sufficient to support the district court’s
broad injunction. We remanded for the district court to
“consider what changes are required to the terms of the
injunction, consistent with this opinion.” Id. at 523.
Although the parties agreed that configuration 2, which
the jury had found infringed one system claim, was to be
removed from the injunction, a central issue on remand
was whether the injunction as to sales and manufacturing
could still be upheld on the basis of infringement of meth-
od claim 26.
    The injunction enjoined “making, . . . offering to sell,
or selling” the “Infringing [software] Products . . . .” J.A.
4263–64. But it did not tie the sales provision to any
particular claims, nor, contrary to the dissent, did the
district court’s opinions do so. 11 There was no question as



     11  The dissent quotes from the district court’s opin-
ion denying judgment as a matter of law to argue that
selling the infringing systems would be an infringement of
method claim 26 specifically. Diss. Op. at 4 n.2 (quoting
ePlus, Inc. v. Lawson Software, Inc., 2011 WL 3584313, at
*4 (E.D. Va. Aug. 12, 2011)). The context of the quoted
sentence shows instead that the district court was refer-
ring to the infringed claims collectively:
     The jury heard and received substantial evidence
     to support a finding of indirect infringement of the
     claims, on either an inducement or contributory
     infringement basis. Evidence demonstrated that
     Lawson actively induces its customers’ direct in-
     fringement by selling and offering to sell the in-
     fringing systems with the intent that its
     customers use those systems in an infringing
     manner. Testimony elicited during the trial and
     the documentary evidence tended to prove also
     that Lawson installs the infringing systems on its
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                    19



to the propriety of the sales and manufacturing injunction
so long as the system claims were infringed. An injunction
can of course be granted against the making and selling of
a product that directly infringes on a system claim. See,
e.g., NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282,
1315 (Fed. Cir. 2005) (noting that using, offering to sell or
selling a patented system can be direct infringement of a
system claim under 35 U.S.C. § 271(a)); Broadcom Corp.
v. Emulex Corp., 732 F.3d 1325, 1338 (Fed. Cir. 2013)
(sustaining injunction against sales where a system claim
was infringed).
    But the system claims were held invalid. ePlus has
argued that the sales and manufacturing provisions of the
injunction could be based on induced infringement by
Lawson of method claim 26, the one claim of the patent
that we held infringed in the original appeal. On remand,
and again on appeal here, Lawson argued that the injunc-
tion had to be modified because it could not, after the



    customers’ systems, configures and implements
    the systems, provides a wide-range of technical
    support and service, and provides instructions and
    training to its customers on how to use the sys-
    tems in an infringing manner.
ePlus, 2011 WL 3584313, at *4. This passage, like the
district court’s injunction opinion, see ePlus, Inc. v. Law-
son Software, Inc., 2011 WL 2119410 (E.D. Va. May 23,
2011), is not clear on the precise scope of Lawson’s indi-
rect infringing activity with respect to each individual
claim. Given that only method claim 26 survived the
ePlus I appeal, with the system claims held invalid and
other method claims found non-infringed, there was a
substantial question as to which activities—Lawson’s
selling, installing, supporting, servicing, or training—
could still be enjoined.
20                     EPLUS, INC.   v. LAWSON SOFTWARE, INC.



invalidation of the two system claims, “prohibit[] Lawson
from making and selling its . . . systems” because the
original injunction barred sales “even though Lawson’s
mere sale and distribution of its systems does not infringe
the method of [c]laim 26.” Lawson’s Statement of Position
Respecting the Effect of the Federal Circuit’s Decision on
the Scope of the Original Injunction at 17–18, No.
3:09cv620 (E.D. Va. Dec. 27, 2012), ECF No. 990 (empha-
ses in original). We agree with Lawson that the original
appeal did not resolve the question of whether claim 26
could support the sales injunction.
    Once the system claims were invalidated, there re-
mained a substantial question of whether an injunction
against sales and manufacturing could be justified on a
theory of inducement. 12 The core functionality of Lawson’s
systems (which ePlus itself characterizes as the “core”
functionality) allowed a purchaser to search an internal
database and order items. But that functionality did not


     12 The dissent suggests we affirmed a determination
of contributory infringement of the method claims. Diss.
Op. at 6–7. In fact, the panel opinion in ePlus I did not
address contributory infringement. This is unsurprising,
since contributory infringement of the method claims was
barely mentioned in the parties’ briefs in that appeal.
Significantly, the panel did not even mention contributory
infringement when it described ePlus’ theories of in-
fringement of the method claims. See ePlus I, 700 F.3d at
514 (“As to the method claims, ePlus alleged that (1)
Lawson induces its customers to use software programs to
perform all of the steps of the asserted method claims; (2)
Lawson itself infringes the method claims by demonstrat-
ing, installing, managing, and maintaining its software
products for its customers; and (3) Lawson, its customers,
and third party vendors jointly infringed the asserted
method claims.”).
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                    21



infringe claim 26. Only using the so-called “Punchout”
feature that allowed customers to also order from third-
party databases was held to be infringing.
     As the Supreme Court explained in the analogous
context of copyright infringement, to “overcome[] the law’s
reluctance to find liability when a defendant merely sells
a commercial product suitable for some lawful use,”
induced infringement requires active steps to encourage
direct infringement and an “affirmative intent that the
product be used to infringe.” Metro-Goldwyn-Mayer Stu-
dios Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005) (citing
Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed.
Cir. 1988)). A seller does not induce infringement of a
method claim by merely selling an apparatus capable of
performing the method. See Dynacore Holdings Corp. v.
U.S. Philips Corp., 363 F.3d 1263, 1276 n.6 (Fed. Cir.
2004) (“[S]ale of a lawful product by lawful means, with
the knowledge that an unaffiliated, third party may
infringe, cannot, in and of itself, constitute inducement of
infringement.” (citation, internal quotation marks omit-
ted)); Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed.
Cir. 1993) (“The law is unequivocal that the sale of
equipment to perform a process is not a sale of the process
within the meaning of section 271(a).”). Inducement
requires such steps as “encourag[ing],” Grokster, 545 U.S.
at 936, “recommend[ing],” Toshiba Corp. v. Imation Corp.,
681 F.3d 1358, 1365 (Fed. Cir. 2012), or “promot[ing],”
Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370
F.3d 1354, 1365 (Fed. Cir. 2004), an infringing use. Fur-
ther, the Fifth Circuit explicitly held in Rohm & Haas Co.
v. Dawson Chemical Co., 599 F.2d 685 (5th Cir. 1979),
aff’d, 448 U.S. 176 (1980), “mere sale is not wrongful
under [271(b)]” where a method claim had been infringed,
so appropriate relief would “not be an injunction forbid-
ding [sales].” Id. at 703 n.24.
    Not surprisingly, our opinion in ePlus I did not resolve
22                        EPLUS, INC.   v. LAWSON SOFTWARE, INC.



whether the sales and manufacturing injunction could be
based on method claim 26. With respect to claim 26, we
stated that Lawson’s customers infringe by performing all
the steps of claim 26, that Lawson directly infringes claim
26, and that Lawson induced infringement. But we did
not hold that sales induced infringement. 13 There was no
argument by either party in the original appeal as to the
consequences of invalidating the system claims, so this


     13   The entirety of our discussion is as follows:
     Moreover, in our view, the record contains sub-
     stantial evidence to show that Lawson itself in-
     fringes claim 26. In particular, there is evidence
     that Lawson installed, maintained, demonstrat-
     ed, and managed the infringing systems for its
     customers. The evidence includes course catalogs
     and webinar presentations offered by Lawson to
     its customers. ePlus also offered testimony at trial
     to the effect that Lawson’s professional services
     include developing, installing, and testing “up to
     and including bringing a system live” for its cus-
     tomers. J.A. 1941. ePlus also provided the jury
     with evidence that the live testing phase included
     performing actual procurements using Lawson’s
     systems. All of this circumstantial evidence per-
     mits a reasonable jury to infer that Lawson per-
     formed the steps of claim 26. Finally, we have
     reviewed the record and are satisfied that it con-
     tains sufficient evidence of Lawson’s intent and
     knowledge to allow a reasonable jury to conclude
     that Lawson induced its customers to infringe
     claim 26. Thus, we affirm the district court’s deni-
     al of JMOL of non-infringement with respect to
     the jury’s verdict of direct and induced infringe-
     ment of claim 26.
ePlus I, 700 F.3d at 520–21.
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                     23



court’s statement that “[t]o the extent that we have not
addressed any of the parties’ arguments . . ., we have
determined them to be unpersuasive,” ePlus I, 700 F.3d at
523 n.2, cannot have been directed to that issue.
    Thus, because the propriety of the injunction against
sales and manufacturing was still an issue after the first
appeal, there had not been “a final decree . . . that finally
adjudicates upon the entire merits, leaving nothing
further to be done except the execution of it.” John Sim-
mons Co., 258 U.S. at 88. And the “scope of relief re-
main[ed] to be determined . . . .” Fresenius, 721 F.3d at
1341. The injunction was not final and under Worden, the
cancellation of the claim by the PTO required that the
injunction and contempt sanctions be vacated.
    ePlus asserts that Lawson viewed the injunction as
final because it filed a Rule 60(b) motion asking the
district court to modify or dissolve the modified injunc-
tion. The filing of a Rule 60(b) motion under such circum-
stances is not unusual. Filing a Rule 60(b) motion did not
prevent Lawson from appealing the modified injunction in
addition to appealing the denial of the Rule 60(b) motion.
See Stone v. Immigration & Naturalization Serv., 514
U.S. 386, 401 (1995) (“Either before or after filing his
appeal, the litigant may also file a Rule 60(b) motion for
relief with the district court. The denial of the [Rule 60(b)]
motion is appealable as a separate final order, and if the
original appeal is still pending . . . the court of appeals
can consolidate the proceedings.”).
    We conclude that the compensatory award for the vio-
lation of the injunction must be set aside in light of the
cancellation of claim 26. Given our disposition, we need
not reach the question of whether Lawson’s redesigned
products are more than colorably different from the
original accused products and whether the redesigned
products infringe.
24                     EPLUS, INC.   v. LAWSON SOFTWARE, INC.



                       CONCLUSION
    For the foregoing reasons, the district court’s injunc-
tion and contempt orders are vacated. The case is re-
manded with instructions to dismiss.
             VACATED AND REMANDED
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

                      EPLUS, INC.,
                     Plaintiff-Appellee

                             v.

             LAWSON SOFTWARE, INC.,
                Defendant-Appellant
               ______________________

                  2013-1506, 2013-1587
                 ______________________

   Appeals from the United States District Court for the
Eastern District of Virginia in No. 09-CV-0620, Senior
Judge Robert E. Payne.
                ______________________

O’MALLEY, Circuit Judge, dissenting.
    I agree that, once this Court affirmed the PTO’s can-
cellation of claim 26 of the ’683 patent, an ongoing injunc-
tion barring infringement of that patent could no longer
stand and must be vacated prospectively. That conclusion
comes easily; as the majority notes, even Appellant’s
counsel conceded the point during oral argument. Maj.
Op. at 11. The more difficult question is whether Appel-
lees are relieved of all penalties for having violated the
2                       EPLUS, INC.   v. LAWSON SOFTWARE, INC.



injunction during the four years it was in place before the
PTO’s cancellation was affirmed. 1
     On this second question, the majority concludes that
“[t]his case does not require us to decide whether civil
contempt sanctions would survive if the injunction had
been final at the time the district court imposed civil
contempt sanctions,” Maj. Op. at 16, because, under
Fresenius USA, Inc. v. Baxter International, Inc., 721 F.3d
1330 (Fed. Cir. 2013) (“Fresenius II”), cancellation of
claims by the Patent and Trademark Office (“PTO”)
“requires that non-final judgments be set aside.” Id.
Because it finds the judgment in this case non-final, the
majority—on the strength of Fresenius II—renders all
aspects of the earlier judgment against Lawson, including
the injunction premised thereon, a nullity. I respectfully
dissent from that aspect of the majority’s opinion because
Fresenius II is distinguishable from, and I do not believe
governs, the present appeal. I write separately, moreover,
to note that, if we are bound by Fresenius II on these
facts, I find Fresenius II even more troubling than I
initially believed. Fresenius USA, Inc. v. Baxter Int’l, Inc.,
733 F.3d 1369, 1373–81 (Fed. Cir. 2013) (O’Malley, J.,
dissenting from denial of petition for rehearing en banc)
(“Fresenius II Denial of En Banc”). If Fresenius II com-
pels the conclusion here, it should be reconsidered.
                              I
    I begin by addressing the majority’s revisions to the
originally-issued opinion in this case, made in response to



    1   While Lawson contends it did not violate the dis-
trict court’s injunction, because the majority does not
reach that question, neither do I. The current record
contains a district court finding that Lawson did violate
the injunction. The question I debate with the majority is
whether we can reach the merits of that finding.
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                    3



legitimate criticisms of the panel opinion set forth in the
Petition for Panel Rehearing and Rehearing En Banc.
Rather than correct the legal errors in its original deci-
sion, the majority now attempts to justify that decision by
rewriting the record and recharacterizing our decision in
ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509 (Fed.
Cir. 2012) (“ePlus I”). The majority newly claims that
“[w]e go no further than we did in Fresenius in deciding
this case.” Maj. Op. at 16. It tries to vindicate its expan-
sive view of finality by asserting that the landscape it
initially addressed in this case was something other than
first described—and something other than it was. Alt-
hough the majority tries hard to conjure a record upon
which it can claim that the injunction at issue in this case
was not final when the panel opinion was written, the
majority does not succeed. The record nevertheless shows
that the majority has stretched the already concerning
scope of Fresenius II to an even more untenable place.
Maj. Op. at 17–23.
                               A
    In ePlus I, we faced an appeal from a district court
judgment which found system claim 3 and method claims
26, 28, and 29 of U.S. Patent No. 6,023,683 (“the ’683
patent”), as well as system claim 1 of U.S. Patent No.
6,505,172 (“the ’172 patent”), valid and infringed. ePlus,
Inc. v. Lawson Software, Inc., No. 3:09-cv-620, 2011 WL
3584313, at *3–4 (E.D. Va. Aug. 12, 2011). Predicated on
that judgment, the district court enjoined all activities
that would constitute continuing infringement of those
claims, including sales of all infringing configurations—
designated Configuration Nos. 2, 3, and 5, as well as the
M3 e-Procurement System. See ePlus Inc. v. Lawson
Software, Inc., 946 F. Supp. 2d 459, 471 (E.D. Va. 2013).
The court specifically found that sales of Configuration 2
infringed claim 1 of the ’172 patent, and sales of the other
three configurations infringed both system claims and all
three method claims. ePlus, Inc. v. Lawson Software, Inc.,
4                       EPLUS, INC.   v. LAWSON SOFTWARE, INC.



No. 3:09-cv-620, 2011 WL 2119410, at *4 (E.D. Va. May
23, 2011) (noting that: (1) the jury found that Configura-
tions 3 and 5 infringed inter alia claim 26 of the ’683
patent but Configuration 2 only infringed claim 1 of the
’172 patent, and (2) the court found that the M3 e-
Procurement system infringed on the basis of a pre-trial
stipulation). Importantly, with respect to the relevant
system and method claims, including claim 26, the dis-
trict court found that “[e]vidence demonstrated that
Lawson actively induces its customers’ direct infringe-
ment by selling and offering to sell the infringing systems
with the intent that its customers use those systems in an
infringing manner.” 2 ePlus, 2011 WL 3584313, at *4
(emphasis added). The court determined that Lawson
also induced infringement by installing and configuring
the infringing systems as well as by providing technical
support and training. Id. Lawson’s customers therefore
directly infringed each of the challenged method claims of


    2    Lawson challenged “the jury’s verdict with respect
to indirect infringement,” claiming that the verdict “was
supported by insufficient evidence.” ePlus, 2011 WL
3584313, at *4. The district court disagreed. As quoted
by the majority, Maj. Op. at 22 n.13, the court concluded
that for each of the five claims at issue, there was suffi-
cient evidence to uphold the jury’s finding of induced
infringement on the basis of Lawson’s “selling and offer-
ing to sell the infringing system.” ePlus, 2011 WL
3584313, at *4. The district court’s collective treatment of
all five claims, and its determination that substantial
evidence of Lawson’s sales supported the jury’s finding of
induced infringement for each of the five claims, does not
mean there remains a “substantial question as to which
activities . . . could still be enjoined.” Maj. Op. at 22 n.13.
It is, indeed, notable that the parties did not question
what activities would be enjoined if any of the verdicts
were affirmed.
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                    5



the ’683 patent, including claim 26, by their use of the
“accused systems,” and Lawson induced that specific form
of direct infringement by “selling and offering to sell the
infringing systems.” Id. There is no doubt that the
injunction entered by the district court was predicated,
among other findings, on an express finding of infringe-
ment of method claim 26 due to Lawson’s sales of the
infringing configurations to its customers. 3 In response to
Lawson’s purported continuing infringing activities in
light of the injunction, ePlus initiated contempt proceed-
ings against Lawson, arguing that the design-around
RQC module was not more than colorably different from
the infringing RSS module. ePlus, 946 F. Supp. 2d at
475–76.
    In ePlus I, Lawson appealed the validity of the two
system claims, the jury’s infringement findings as to all
claims, and the district court’s entry of an injunction.
ePlus I, 700 F.3d at 516–17. Importantly, Lawson did not
appeal the validity determinations regarding claims 26,
28, and 29 of the ’683 patent. Further, although it did
appeal the infringement determinations as to claims 26,
28, and 29, it did not assert that the number of claims
infringed by Lawson’s systems impacted the validity or
scope of the injunction. Lawson never contended that it
was somehow less appropriate to enjoin infringement of
one valid claim than it would be to enjoin infringement of
any other claim. Importantly, Lawson argued that the
injunction was too broad because it enjoined not just the
sale of the infringing products, but also servicing and
maintenance of products sold prior to the injunction. Id.



    3   Prior to entering the injunction, the district court
excluded ePlus’s expert report regarding damages, and
did not permit ePlus to present evidence of damages due
to prior discovery sanctions. ePlus I, 700 F.3d at 515.
Thus, ePlus’s only available remedy was an injunction.
6                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



at 522. But that was the only appellate attack Lawson
made regarding the injunction.
     We concluded that the system claims were invalid as
indefinite, and reversed the district court’s denial of
judgment as a matter of law for noninfringement of
claims 28 and 29 of the ’683 patent. Id. at 523. With
respect to infringement of claim 26, however, we held that
“there remains no serious dispute that Lawson’s custom-
ers infringe claim 26.” Id. at 520. We then stated that
“[f]inally, we have reviewed the record and are satisfied
that it contains sufficient evidence of Lawson’s intent and
knowledge to allow a reasonable jury to conclude that
Lawson induced its customers to infringe claim 26.” Id. at
521. We were also unpersuaded by Lawson’s argument
that there was insufficient evidence that Lawson was a
contributory infringer. 4 Id. at 523 n.2. We thus affirmed




    4   We stated in ePlus I that “[t]o the extent that we
have not addressed any of the parties’ arguments . . . , we
have determined them to be unpersuasive.” 700 F.3d at
523 n.2. The district court concluded that Lawson con-
tributorially infringed, ePlus, 2011 WL 3584313, at *4
(“The jury heard and received substantial evidence to
support a finding of indirect infringement of the claims,
on either an inducement or contributory infringement
basis.” (emphasis added)), and the injunction barred
Lawson from “directly or indirectly” making, using, offer-
ing to sell, selling, or importing the accused Configura-
tions. Joint Appendix (“JA”) 1–4. Lawson argued in its
merits brief on appeal that, to the extent ePlus relied on a
contributory infringement theory to prove infringement of
the method claims, ePlus failed to prove contributory
infringement. Accordingly, because we did not address
contributory infringement in ePlus I, we found Lawson’s
arguments regarding contributory infringement “unper-
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                     7



that Lawson induced infringement and engaged in con-
tributory infringement through “selling and offering to
sell the infringing systems,” and we did so without hesita-
tion. See ePlus, 2011 WL 3584313, at *4. After this
determination, we reversed the infringement findings as
to claims 28 and 29, but never questioned the continuing
validity of the injunction as to the sales found to infringe
claim 26. Indeed, we examined and affirmed both the fact
and scope of the injunction after our rulings on claims 28
and 29. Id. at 522. We never implied (and Lawson never
questioned) whether the propriety of the injunction varied
according to the number of claims infringed. Id. (“Here,
however, it just so happens that because of the district
court’s enforcement of the discovery rules, ePlus was not
permitted to present any evidence of damages. That does
not mean that Lawson was authorized to sell products
that infringe ePlus’s patent.”). We therefore affirmed the
infringement finding as to claim 26, retained the injunc-
tion barring sales of all configurations that infringed
claim 26, and returned the case to the district court with
a very limited remand instruction: “We remand to the
district court to consider what changes are required to the
terms of the injunction, consistent with this opinion. In
all other respects, we affirm.” Id. at 523. We did not, as
the majority now claims, “overturn[ ]” the injunction.
Maj. Op. at 3.
     Indeed, at the point at which we remanded to the dis-
trict court, it is hard to conceive how “the propriety of the
injunction against sales and manufacturing was still an
issue . . . .” Maj. Op. at 23. We had affirmed that sub-
stantial evidence supported the district court’s conclusion
that Lawson induced infringement of claim 26 through
sales of certain accused configurations. We did not vacate



suasive,” and did not disturb the district court’s contribu-
tory infringement determinations concerning claim 26.
8                       EPLUS, INC.   v. LAWSON SOFTWARE, INC.



the district court’s injunction, request that the district
court “revise or reconsider the injunction,” as we did in
Fresenius USA, Inc. v. Baxter International, Inc., 582 F.3d
1288, 1293 (Fed. Cir. 2009) (“Fresenius I”), or even alter the
scope of the injunction in light of Lawson’s direct chal-
lenge. We merely remanded for the district court to
consider whether and if “changes are required” in light of
the district court’s inherent continuing equitable powers
to prospectively adjust an injunction due to our invalida-
tion of claim 1 of the ’172 patent. The judgment that
claim 26 was valid and infringed—one of the judgments
upon which the injunction was predicated—remained
intact, as did the injunction.
     It is therefore unsurprising that the district court, on
remand, found that we “affirmed the judgment of direct
and indirect infringement of [c]laim 26, rejected Lawson's
challenge to the breadth of the injunction, and held that
‘[t]o the extent that we have not addressed any of the
parties' arguments on appeal or cross-appeal, we have
determined them to be unpersuasive,’” thus concluding
that “it is rather clear that the Court of Appeals affirmed
the decision to issue the injunction.” ePlus, 946 F. Supp.
2d at 463 (quoting ePlus I, 700 F.3d at 523 n.2). The only
modification necessary under our remand instruction
“consistent with [our] opinion” involved removing Config-
uration 2 from the scope of the injunction because claim 1
of the ’172 patent, the sole basis for infringement by
Configuration 2, was held invalid. Id. at 471. But the
district court did not vacate the injunction as to the other
configurations prospectively, and, in fact, found that all
four of the eBay factors supported prospectively continu-
ing the injunction. Id. at 467–70. The district court
further held that it could not reconsider the injunction
retrospectively on the basis of the mandate rule. Id. at
463. Although the majority now states that the “propriety
of the injunction . . . was still at issue” after ePlus I, Maj.
Op. at 23, there is no language in ePlus I that supports
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                   9



that revisionist view of what we did; the district court
correctly concluded that our mandate in ePlus I foreclosed
any challenges to retrospective aspects of the injunction.
The district court’s analysis of the continuing prospective
validity of the injunction under its inherent equitable
power says nothing about the finality of our judgment in
ePlus I. Notably, even Lawson did not believe the remand
was flexible enough to allow for reconsideration of the
injunction. It resorted to Rule 60(b) in an effort to set
aside that previous judgment, something it would not
have had to do if we had actually vacated the injunction
as the majority’s “clarification” now appears to claim.
    Although the majority cites to extensive case law re-
garding inducement and the requirements for inducement
as applied to sales of “an apparatus capable of performing
the method,” Maj. Op. at 21, that case law is inapposite—
the district court and the jury already concluded that
Lawson induced infringement through sales of the ac-
cused configurations, and we affirmed the district court’s
conclusion that substantial evidence supported that
result. To use the majority’s words, had we questioned
the propriety of enjoining sales that infringed claim 26 or
wanted to vacate the injunction, it would have been easy
enough to say so. We know how to vacate an injunction
when we want to; we simply did not do so in this case.
Saying now that a purported “non-final” injunction, Maj.
Op. at 15, remained at issue after ePlus I does not make it
so when the record reflects otherwise.
                               B
     I turn now to whether Fresenius II mandates the
decision in this case. The majority claims that it “goes no
further than we did in Fresenius in deciding this case,”
Maj. Op. at 16, but the facts of Fresenius II do not bear
the weight allotted them by the majority.      In Fresenius
II, a panel of this court held that “cancellation of claims
during reexamination would be binding in concurrent
10                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



litigation,” and, while “cancellation of a patent’s claims
cannot be used to reopen a final damages judgment
ending a suit based on those claims,” there can be “no
final judgment binding the parties” “where the scope of
relief remains to be determined.” 721 F.3d at 1339, 1341
(emphasis added). The actual record here is different
than the record before us in Fresenius II.
    In the initial district court litigation between Frese-
nius and Baxter, Fresenius brought suit seeking a declar-
atory judgment that the claims of three patents were
“invalid and not infringed by Fresenius’s hemodialysis
machines.” Fresenius I, 582 F.3d at 1293. The district
court granted Baxter judgment as a matter of law, finding
that the jury’s obviousness verdict was not supported by
substantial evidence. Id. After a separate jury trial on
damages, the jury awarded Baxter over $14 million in
pre-verdict damages. Id. at 1294. The district court
issued a permanent injunction against Fresenius, but
delayed implementation of the injunction to allow Frese-
nius time to develop a non-infringing machine. Id. In
lieu of the immediate injunction, the district court ordered
Fresenius to pay an on-going royalty for any infringing
machines sold prior to the injunction taking effect. Id.
Fresenius appealed the district court’s grant of judgment
as a matter of law regarding validity, the permanent
injunction, the ongoing royalty award, and claim con-
struction. Id. Fresenius, however, did not appeal the pre-
verdict damages award, only the prospective royalties and
injunction.
    In Fresenius I, we reversed the district court’s grant of
judgment as a matter of law for all but six claims of one of
Baxter’s patents. Id. at 1304. For those six claims, we
held that Fresenius failed to prove invalidity. Id. We
remanded to the district court with the following instruc-
tion: “[W]e vacate the injunction and remand so that the
court may revise or reconsider the injunction in light of
the fact that only claims 26–31 of the ’434 patent remain
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                   11



valid and infringed. Finally, we vacate the royalty award
entered by the district court and remand for further
proceedings consistent with this opinion.” Id.
    On remand, Fresenius argued that no injunction
should issue, the post-verdict ongoing royalty amount was
unreasonable, and it should receive a “new trial for pre-
verdict damages for infringement of [U.S. Patent No.
5,247,434].” Fresenius II, 721 F.3d at 1333. The district
court declined to enter an injunction as the relevant
patent had expired, awarded Baxter new post-verdict
damages at a reduced royalty, and denied Fresenius’s
motion for a new pre-verdict damages trial. Id. While
Fresenius’s second appeal was pending, we affirmed a
decision of the PTO cancelling the remaining claims of the
’434 patent in an ex parte reexamination proceeding. In
re Baxter Int’l, Inc., 678 F.3d 1357, 1366 (Fed. Cir. 2012).
The Fresenius II panel concluded that, because we vacat-
ed the injunction and the royalty award, and remanded
for “further proceedings consistent with this opinion” in
Fresenius I, 582 F.3d at 1304, the litigation was not final
as we left the district court with more to do than simply
“execute the judgment.” Fresenius II, 721 F.3d at 1341.
Because we found the “scope of relief remain[ed] to be
determined,” there was “no final judgment binding the
parties,” and the reexamination “extinguishe[d] the
underlying basis for suits based on the patent.” Id. at
1341, 1344.
    There are crucial differences between the facts in the
present appeal and the facts in Fresenius II. First, alt-
hough Fresenius failed to appeal the pre-verdict damages
judgment from the district court, it did appeal the validity
of all relevant claims-at-issue, and did move for a new
trial on pre-verdict damages on remand premised on the
“further proceedings” language in our remand instruction.
In the present appeal, Lawson never appealed the validity
of claim 26 of the ’683 patent and never sought to press
the issue again, either before the trial court or this one.
12                     EPLUS, INC.   v. LAWSON SOFTWARE, INC.



The judgment that claim 26 of the ’683 patent was valid
became final when the district court entered final judg-
ment and Lawson chose not to appeal that judgment to
this court. While the PTO did find claim 26 of the ’683
patent to be invalid through ex parte reexamination
proceedings, and we affirmed that decision in In re ePlus,
Inc., 540 F. App’x 998 (Fed. Cir. 2013), the validity of
claim 26 of the ’683 patent as between ePlus and Lawson
with regards to the continuing injunction (at least until
the decision in In re ePlus mandated) was final well before
that point in time. See Function Media, L.L.C. v. Kappos,
508 F. App’x 953, 956 (Fed. Cir. 2013) (holding that a
party’s failure to appeal from a district court’s judgment
of no invalidity barred that party from seeking reexami-
nation of those claims); Odectics, Inc. v. Storage Tech.
Corp., 185 F.3d 1259, 1275 (Fed. Cir. 1999) (holding that
failure of a party to cross-appeal the issue of validity
“preclud[ed] further consideration of the issue”); cf. Volvo
Trademark Holding Aktiebolaget v. Clark Mach. Co., 510
F.3d 474, 481 (4th Cir. 2007) (the mandate rule “foreclos-
es litigation of issues decided by the district court but
foregone on appeal”); Bullen v. De Bretteville, 239 F.3d
824, 829 (9th Cir. 1956), overruled on other grounds,
Lacey v. Maricopa Cnty., 693 F.3d 896 (9th Cir. 2012) (“A
case remanded for further hearing or over which jurisdic-
tion is retained for some purposes may nonetheless be
final as to other issues determined.”).
    Second, the remand instructions in ePlus I and Frese-
nius I were different in important, material respects. In
Fresenius I, we vacated the injunction and the post-
verdict royalty awards, instructed the district court to
“revise or reconsider” the injunction, and remanded “for
further proceedings consistent with this opinion.” Frese-
nius I, 582 F.3d at 1304. By vacating the injunction, we
required the district court to analyze the injunction anew.
And, in Fresenius II, we found that by remanding “for
further proceedings consistent with this opinion,” the
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                   13



district court was free to consider other aspects of the
case, including Fresenius’s motion for a new trial regard-
ing pre-verdict damages. Here, we did not vacate the
injunction, which was the only form of remedy available
to ePlus. By not vacating the injunction, the injunction
remained in force and any on-going infringing activity by
Lawson would be potential contemptible conduct. We did
no more than suggest that the district court “consider”
any necessary changes to the injunction, consistent with
the district court’s equitable powers; we did not direct the
district court to “revise or reconsider” the injunction.
Finally, we conspicuously did not remand for “any further
proceedings consistent with this opinion.” As the majority
in Fresenius II recognized in distinguishing Qualcomm,
Inc. v. FCC, 181 F.3d 1370, 1380 (D.C. Cir. 1999), the
scope of the appellate remand instruction is crucial to the
preclusive effect of an intervening PTO reexamination
determination. Fresenius II, 721 F.3d at 1346 n.12.
    The Fresenius II majority concluded that the remand
instruction in Qualcomm was for “specific, immediate
relief for a party,” while it found the remand instruction
in Fresenius I more open-ended—“for further proceed-
ings.” Id. The remand instruction in ePlus I, like that in
Qualcomm, did contemplate “specific, immediate relief for
a party”—Configuration 2 should be removed from the
scope of the injunction, but the injunction remains in force
subject only to the district court’s continuing equitable
power over it. And, the remand instruction in ePlus I
noticeably does not include an order for the district court
to undertake “further proceedings.” Fresenius I, 582 F.3d
at 1304. Thus, the more limited scope of the remand
order from ePlus I differentiates the present appeal from
that in Fresenius.
    Finally, the nature of the remedies at issue on appeal
distinguishes the two cases. In Fresenius II, the majority
determined that both pre-verdict and post-verdict damag-
es would be vacated in light of the PTO reexamination
14                     EPLUS, INC.   v. LAWSON SOFTWARE, INC.



results because the majority said the general scope of
monetary remedies was not yet final. Even if true in
Fresenius, that is not the case here. As noted, I agree
with the majority that the injunction should be vacated
prospectively from the date when In re ePlus mandated,
and that any coercive civil remedies should be vacated
because it would be inappropriate to force Lawson to
comply with an injunction that is no longer enforceable.
As the majority correctly states, an injunction is a “con-
tinuing decree” that must not be enforced prospectively if
the right underlying the decree is abrogated. Maj. Op. at
9–11 (quoting Pennsylvania. v. Wheeling & Belmont
Bridge Co., 59 U.S. (18 How.) 421, 422 (1855)). I disagree,
however, that the results of In re ePlus require that we
vacate the compensatory civil contempt order.
    Lawson’s conduct giving rise to the contempt order oc-
curred while the injunction, with regards to Configura-
tions 3 and 5, remained valid under ePlus I. Although we
remanded to allow the district court to use its inherent
equitable powers to remove Configuration 2 from the
scope of the injunction, we retained the jury’s infringe-
ment finding with regards to claim 26 of the ’683 patent,
Lawson did not appeal the validity of claim 26, and we did
not vacate the injunction. In a contempt proceeding, the
putative contemnor may not challenge the correctness of
the underlying order or attack the validity of the underly-
ing basis for an injunction unless the court issuing the
injunction had no jurisdiction to do so. 5 Maggio v. Zeitz,



     5  The cases the majority relies upon, such as
McLean v. Central States, Southeast & Southwest Areas
Pension Fund, 762 F.2d 1204 (4th Cir. 1985); Scott &
Fetzer Co. v. Dile, 643 F.2d 670 (9th Cir. 1981); ITT
Committee Development Corp. v. Barton, 569 F.2d 1351
(5th Cir. 1978); Blaylock v. Cheker Oil Co., 547 F.2d 962
(6th Cir. 1976); LaTrobe Steel Co. v. United Steelworkers
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                     15



333 U.S. 56, 68–69 (1948); Proveris Scientific Corp. v.
Innovasystems, Inc., 739 F.3d 1367, 1370 (Fed. Cir. 2014)
(“‘In a contempt proceeding to enforce [an] injunction . . .,
the only available defense for anyone bound by the injunc-
tion was that the [newly accused product] did not infringe.
. . . Validity and infringement by the original device were


of America, AFL-CIO, 545 F.2d 1336 (3d Cir. 1976), all
involved both the underlying injunction and the contempt
order simultaneously on direct appeal. The majority
characterizes these cases as “involv[ing] orders whose
merits were still subject to review when the civil contempt
sanctions were reviewed.” Maj. Op. at 15 n.8. Here,
Lawson failed to appeal the validity of claim 26 of the ’683
patent, we affirmed the jury’s finding of infringement on
that patent, and we did not vacate the injunction.
    The majority further relies on Worden v. Searls, 121
U.S. 14 (1887). Like the cases noted above, Worden
involved an injunction and contempt order which were
simultaneously on direct appeal. Worden stands for “the
proposition that the right to fines for violation of a prelim-
inary injunction is founded on that injunction which in
turn is predicated on the validity of the patent.” Frese-
nius II Denial of En Banc, 733 F.3d at 1376 n.5 (O’Malley,
J., dissenting from denial of petition for rehearing en
banc). Worden thus permits prospective challenges to an
injunction and prevents a contempt finding predicated
upon an injunction after the predicate for it no longer
exits. Id. (“Thus, while the PTO’s cancellation of the
patent renders it prospectively invalid, the cancellation
cannot render a prior judgment for damages invalid.”).
We affirmed the underlying injunction in ePlus I, render-
ing the injunction retrospectively final. Thus, because the
contemptible conduct occurred before the PTO invalidated
the patent upon which the retrospectively final injunction
was predicated, it is not “curious” that Worden does not
apply to these facts.
16                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



not open to challenge.’” (quoting Additive Controls &
Measurement Sys., Inc. v. Flowdata, Inc., 154 F.3d 1345,
1350 (Fed. Cir. 1998))). All that remained available for
review in the current appeal was the prospective validity
of the injunction and the propriety of findings made
during the contempt proceeding, not the underlying basis
for the injunction at issue in the contempt proceeding.
Thus, the underlying basis of the contempt award, which
is the only aspect of the contempt proceeding that could
be influenced by the results of In re ePlus, was not at
issue during the district court contempt proceedings, and
is not at issue in this appeal.
    Although the majority assures us that “[w]e go no fur-
ther than we did in Fresenius in deciding this case,” Maj.
Op. at 16, the facts of the instant appeal present a differ-
ent picture than those recited in the majority opinion and
show substantial, important distinctions from the facts in
Fresenius II. For these reasons, I believe that the majori-
ty incorrectly holds that Fresenius II requires that we
vacate the compensatory contempt award in light of In re
ePlus. 6 And, I believe that the majority today narrows
even further the already stingy version of finality set
forth in Fresenius II.
                             II
    Finally, if the majority is correct that Fresenius II
requires us to vacate the compensatory contempt award, 7
even though Lawson failed to appeal the judgment finding
claim 26 of the ’683 patent valid and even though we did
not vacate the injunction or remand for open-ended pro-



     6    As noted, given the grounds for our decision here,
I express no opinion on the merits of Lawson’s objections
to the contempt findings.
      7   And is correct that the present appeal does not “go
. . . further than we did in Fresenius [II].” Maj. Op. at 16.
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                     17



ceedings, then Fresenius II is even more concerning than I
first believed. I continue to believe that we wrongly
decided Fresenius II. As detailed in my dissent to the
denial of the Petition for Rehearing en Banc in Fresenius
II, Fresenius II Denial of En Banc, 733 F.3d at 1373–81
(O’Malley, J., dissenting from denial of petition for rehear-
ing en banc), the majority in Fresenius II erroneously
analyzed both the finality of the issues on appeal and the
scope of our appellate remand instruction in Fresenius I.
These arguments apply with even greater force and
urgency here.
     The majority’s approach to finality will further dis-
place the critical role of district courts in patent infringe-
ment suits. According to the majority, a decision of the
PTO, an administrative agency under a coordinate branch
of government, can displace a judgment of an Article III
court. Validity of claim 26 became final when Lawson
failed to appeal the issue in ePlus I and our disposition
did not reopen the judgment for any further proceedings
regarding the validity of any of the claims-at-issue, nor
did it leave the remedy open in the sense Fresenius II said
Fresenius I did. By extending Fresenius II to these mate-
rially different circumstances, the majority assumes that
any determination made during an infringement case,
even if that specific issue is never appealed, can be nulli-
fied by the action of an administrative agency as long as
anything—even a fully discretionary “consideration” of an
intact remedy—remains available. The majority’s ap-
proach essentially allows an executive agency to render
both the panel opinion in ePlus I and the district court’s
judgment regarding validity as advisory opinions. That
result ignores the role of Article III courts in our constitu-
tional structure. See Hayburn’s Case, 2 U.S. (2 Dall.) 409,
411 (1792) (Chief Justice Jay and Justice Cushing writ-
ing, in an opinion for the Circuit Court for the District of
New York, that the executive branch may not “sit as a
court of errors on the judicial acts or opinions” of the
18                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



federal courts); Qualcomm, 181 F.3d at 1379–80 (discuss-
ing Plaut v. Spendthrift Farm, Inc., 514 U.S. 211, 240
(1995), and the protection granted to final judgments of
Article III courts from invalidation by coordinate branch-
es under the separation of powers doctrine).
    The majority’s approach is contrary to the well-
established law of finality when the merits of an issue are
conclusively decided. Fresenius II Denial of En Banc, 733
F.3d at 1375–77 (O’Malley, J., dissenting from denial of
petition for rehearing en banc). And the majority opinion
further deepens the circuit split between our court’s
approach to finality and that of our sister circuits, as
identified by Judge Newman in her dissent in Fresenius
II. 721 F.3d at 1355–59 (Newman, J., dissenting). Alt-
hough it is true that a district court, in its equitable
powers, retains the ability to alter the scope of an injunc-
tion prospectively, the district court here lacked the power
to vacate the merits underlying our finding of infringe-
ment once the Supreme Court denied certiorari after
ePlus I. Even further, we lacked the power in ePlus I to
alter the jury’s finding regarding the validity of claim 26
of the ’683 patent because Lawson did not appeal that
issue. The majority, nevertheless, breaks away from well-
established notions of finality to hold that the jury’s final
determination that claim 26 was not invalid—a judgment
justifying the injunction that led to the compensatory civil
contempt order—must be vacated in light of a later de-
termination by an executive agency.
    The majority opinion also creates uncertainty for any
future compensatory contempt awards due to the unique
nature of injunctions, a point not contemplated in Frese-
nius II. District courts always retain the equitable power
to revise injunctions prospectively in light of changed
circumstance. Does this mean that, where an injunction
is entered, the “scope of relief remains to be determined”
in perpetuity? Maj. Op. at 17. Even if we had affirmed
all grounds in ePlus I and did not remand, Lawson could
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                   19



still have filed a Rule 60(b) motion and argued that, as
long as the contempt proceedings were on appeal the
“scope of relief remains to be determined” under the
district court’s continuing power over the injunction.
Would we have to vacate every civil contempt award
where a later PTO decision invalidates the patent at issue
in those contempt proceedings? 8
    The majority decision today exacerbates the circuit
split between the Federal Circuit and the United States
Court of Appeals for the District of Columbia Circuit
(“D.C. Circuit”). As noted, the Fresenius II majority
distinguished Qualcomm by arguing that the D.C. Circuit
ordered “specific” relief on remand, while our order for
remand in Fresenius I was not sufficiently specific.
Fresenius II, 721 F.3d at 1346 n.12. Here, our remand
order was significantly more specific than in Fresenius
II—only allowing the district court to alter the scope of
the injunction within its inherent equitable powers, but
not permitting the district court to upset the final deter-
minations on the merits or allowing the district court to
undertake further proceedings. The majority here argues,
however, that Fresenius II applies, despite our more
specific remand instruction in ePlus I. It appears that no



    8    Indeed, parties have begun reading Fresenius II
broadly, arguing that the policies and rationales underly-
ing that decision justify reopening even admittedly final
judgments to give effect to later PTO decisions. See, e.g.,
Versata Software, Inc. v. SAP Am., Inc., No. 2:07-cv-153-
RSP, 2014 WL 1600327, at *2 (E.D. Tex. Apr. 21, 2014)
(dismissing infringer’s argument that its Rule 60(b)(6)
motion to reopen a final judgment of validity should be
granted in light of a later Board determination of invalidi-
ty), aff’d sub nom. Versata Computer Indus. Solution v.
SAP Am., Inc., No. 14-1430, 2014 WL 2765230 (Fed. Cir.
June 18, 2014) (per curiam).
20                      EPLUS, INC.   v. LAWSON SOFTWARE, INC.



remand instruction would ever be specific enough to
protect the integrity of an Article III court’s judgment as
long as any “remand” occurs. That view strains concepts
of finality beyond all recognition.
    Finally, as I noted in my dissent from denial of re-
hearing en banc in Fresenius II Denial of En Banc, 733
F.3d at 1380–81 (O’Malley, J., dissenting from denial of
petition for rehearing en banc), the view of finality we
espouse in these two cases is a view of finality which is
wildly divergent from that employed by this very court in
other contexts. In Robert Bosch, LLC v. Plyon Manufac-
turing Corp., 719 F.3d 1305 (Fed. Cir. 2013) (en banc),
this court held, en banc, that liability determinations in
patent cases are final for purposes of immediate appeal
under 28 U.S.C. § 1292(c), even when a jury trial on
damages and willfulness remains. See id. at 1316, 1319–
20. There, we concluded (albeit incorrectly in my view)
that damages and willfulness determinations are suffi-
ciently “ministerial” to constitute no more than an “ac-
counting” within the meaning of § 1292(c), thus rendering
the liability determination a “final” judgment for purposes
of appeal.
    Despite the very liberal view of finality we employed
in that context, we continue to declare that we must
employ the stingiest view of that concept when deciding at
what point parties may rely on litigated determinations of
their rights. This chasm between the sweeping rule laid
down both in Fresenius II and here and the one the court
established in Bosch is confusing. Notably, finality often
may be applied less strictly for preclusion purposes than
for purposes of appeal, not more so. See Miller Brewing
Co. v. Joseph Schlitz Brewing Co., 605 F.2d 990, 996 (7th
Cir. 1979) ( “To be ‘final’ for purposes of collateral estoppel
the decision need only be immune, as a practical matter,
to reversal or amendment. ‘Finality’ in the sense of 28
U.S.C. § 1291 is not required.”); see also Syverson v. Int’l
Bus. Mach. Corp., 472 F.3d 1072, 1079 (9th Cir. 2007);
EPLUS, INC.   v. LAWSON SOFTWARE, INC.                       21



Henglein v. Colt Indus. Operating Corp., 260 F.3d 201,
209–10 (3d Cir. 2001) (“[W]e commented that finality for
purposes of issue preclusion is a more ‘pliant’ concept
than it would be in other contexts.”); Swentek v. USAIR,
Inc., 830 F.2d 552, 561 (4th Cir. 1987) (“Finality for
purposes of collateral estoppel is a flexible concept. . . . ”),
abrogated on other grounds, Mikels v. City of Durham,
N.C., 183 F.3d 323 (4th Cir. 1999); Pye v. Dep’t of Transp.
of Georgia, 513 F.2d 290, 292 (5th Cir. 1975) (“To be final
a judgment does not have to dispose of all matters in-
volved in a proceeding.”); Zdanok v. Glidden Co., 327 F.2d
944, 955 (2d Cir. 1964). Thus, it would seem that our
jurisprudence should be the reverse of what it has become.
    I see no way to reconcile the liberal view of finality for
appeal purposes we adopted in Bosch with today’s view
that finality almost never exists for preclusion purposes.
I dissent from the majority’s decision. I would proceed to
consider the merits of Lawson’s appeal from the trial
court’s civil contempt findings.
