                            NOTE: This order is nonprecedential.

 United States Court of Appeals for the Federal Circuit
                            MISCELLANEOUS DOCKET NO. 892

             IN RE ENZO BIOCHEM, INC., ENZO LIFE SCIENCES, INC.,
                           and YALE UNIVERSITY,

                                                          Petitioners.

      On Writ of Mandamus from the United States District Court for the District of
          Connecticut in case no. 3:04-CV-929, Judge Janet Bond Arterton.

           --------------------------------------------------------------------------------------

                                              2008-1058

                 ENZO BIOCHEM, INC., ENZO LIFE SCIENCES, INC.,
                            and YALE UNIVERSITY,

                                                          Plaintiffs-Appellants,

                                                    v.

                            APPLERA CORP. and TROPIX, INC.,

                                                          Defendants-Appellees.

      Appeal from the United States District Court for the District of Connecticut in
                  case no. 3:04-CV-929, Judge Janet Bond Arterton.

                        ON PETITION FOR WRIT OF MANDAMUS

Before GAJARSA, LINN, and PROST, Circuit Judges.

PROST, Circuit Judge.

                                              ORDER

      Enzo Biochem, Inc. et al. (Enzo) petition for a writ of mandamus to direct the

United States District Court for the District of Connecticut to enter final judgment.

Alternatively, Enzo requests that the court recall the mandate in Enzo Biochem, Inc. v.
Applera Corp., no. 2008-1058, reinstate that appeal, and set a briefing schedule.

Applera Corp. et al. (Applera) oppose.

       Enzo sued Applera for infringement of six patents. Applera counterclaimed for

noninfringement and invalidity of all six patents. On the parties’ stipulation, the district

court dismissed all claims and counterclaims with respect to two of the patents. The

district court later entered summary judgment of invalidity with respect to three of the

patents. In its ruling, the district court stated, “Plaintiffs [Enzo et al.] no longer press

their claims related to Patent No. 4,711,955 (“ ‘955 Patent”) [the final patent in suit].”

The district court did not rule on Applera’s counterclaims directed to the ‘955 patent and

directed the clerk to close the case. The clerk closed the case and issued a document

entitled “JUDGMENT” on September 10, 2007. Enzo filed a notice of appeal. However,

Enzo subsequently filed a motion to voluntarily dismiss the appeal. The motion was

granted by the clerk of this court and the appeal, no. 2008-1058, was dismissed on

January 30, 2008.

       Enzo then filed a motion for entry of final judgment in the district court. On

November 24, 2008 the district court denied the motion. The district court reasoned that

its September 10, 2007 decision was a final judgment. The district court stated that

because it found invalid all of the patent claims on which Enzo continued to press its

infringement allegations, it was not necessary to rule on Applera’s noninfringement

counterclaims. With respect to the ‘955 patent, the district court stated that Enzo had

effectively withdrawn its infringement claims and this “obviate[ed] the need for any

judicial determination.”




Misc. 892, 2008-1058                         2
       Enzo states that it voluntarily dismissed appeal no. 2008-1058 because it

believed that the district court’s September 10, 2007 decision was not a final judgment.

Enzo states that it has now stipulated that it will not sue Applera for infringement arising

from activities or products with respect to the ‘955 patent occurring on or before May 4,

2008 and argues that this “thereby moot[s] the counterclaims directed to this patent.”

       Applera argues that the district court’s September 10, 2007 decision reflected the

district court’s clear intention to end the case and, pursuant to this court’s decision in

Pandrol USA, LP v. Airboss Railway Prods., Inc., 320 F.3d 1354, 1362-63 (Fed. Cir.

2003), that is sufficient to render that decision a final judgment. With respect to the ‘955

patent, Applera argues that the district court “clearly declared that the ‘955 patent was

no longer at issue before entering judgment.”

       The remedy of mandamus is available only in extraordinary situations to correct a

clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461,

464 (Fed. Cir. 1988). A party seeking a writ bears the burden of proving that it has no

other means of attaining the relief desired, Mallard v. U.S. Dist. Court for the Southern

Dist. of Iowa, 490 U.S. 296, 309 (1989), and that the right to issuance of the writ is "clear

and indisputable," Allied Chemical Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980).

       “A ‘final decision’ generally is one which ends the litigation on the merits and

leaves nothing for the court to do but execute the judgment.” Catlin v. United States,

324 U.S. 229, 233 (1945).         “A pending counterclaim precludes jurisdiction absent

certification under Rule 54(b)”. See Pause Technology, LLC v. Tivo Inc., 401 F.3d

1290, 1294 (Fed. Cir. 2005); see also Nystrom v. Trex Co., 339 F.3d 1347, 1350 (Fed.

Cir. 2003) (“If a case is not fully adjudicated as to all claims for all parties and there is no




Misc. 892, 2008-1058                           3
express determination that there is no just reason for delay or express direction for entry

of judgment as to fewer than all of the parties or claims, there is no final decision under

28 U.S.C. § 1295 (a)(1) and therefore no jurisdiction”).

       In this case, the district court’s September 10, 2007 order did not dispose of

Applera’s invalidity counterclaim concerning the ‘955 patent. Although the district court

noted that Enzo was no longer pressing its infringement claim concerning that patent, the

district court made no ruling concerning invalidity of the ‘955 patent claims. Thus, this

case is unlike Pandrol. In Pandrol, the district court ruled that the defendants had waived

their counterclaims. See Pandrol, 320 F.3d at 1357 (“[t]he district court . . . found that the

defendants had waived their affirmative defenses and counterclaims by not raising them

during briefing or cross-motions for summary judgment”). In contrast, in this case the

district court did not enter any ruling concerning the counterclaim of invalidity of the ‘955

patent. As there has been no express ruling concerning that counterclaim, it remains

pending. Because that counterclaim remains pending, the court determines that Enzo has

met its burden of showing a clear and indisputable right to issuance of a writ. The court

does not decide whether Enzo is correct that its stipulation not to sue Applera concerning

the ‘955 patent moots Applera’s counterclaims directed to that patent. The district court

should resolve that issue in the first instance.

       Accordingly,

       IT IS ORDERED THAT:

       (1)    The petition for a writ of mandamus is granted to the extent that the district

court is directed to reopen the case, enter a ruling on Applera’s counterclaim for

invalidity of the ‘955 patent, and, after ruling on that counterclaim, enter final judgment.




Misc. 892, 2008-1058                          4
       (2)   Enzo’s alternative request that the court recall the mandate in Enzo

Biochem, Inc. v. Applera Corp., no. 2008-1058, reinstate that appeal, and set a briefing

schedule is denied.

                                               FOR THE COURT



      Feb. 6, 2009                              /s/ Jan Horbaly
          Date                                 Jan Horbaly
                                               Clerk

cc:    L. Gene Spears, Esq.
       Nicholas Groombridge, Esq.
       Judge, USDC, D. Conn.
       Clerk, USDC, D. Conn.

s17




Misc. 892, 2008-1058                       5
