Change in the Law not Enough for R.60(b) Relief from Judgment

Medinol Ltd. v. Cordis Corp. (Fed. Cir. 2020) (nonprecedential)

Fed. R. Civ. Pro. 60 is entitled “Relief from a Judgment or Order” and allows a party to request that a district court reconsider a prior order. R. 60(b) provides a list of specific reasons for granting relief but concludes with a catch-all “any other reason that justifies relief.” R. 60(b)(6).  At times, 60(b)(6) motions can be quite powerful — especially because the rule does not set a firm deadline other than recognizing that the request “must be made within a reasonable time.” That said, courts only allow relief in “extraordinary circumstances.”

Back in 2014, the district court dismissed Medinol’s patent infringement claims as bared by laches.  Three years later, the U.S. Supreme Court held in SCA Hygiene that laches is not a proper defense in this situation. SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017).

Case History: Medinol actually filed its R. 60(b)(6) motion in 2014. A few months after its case had been dismissed, the Supreme Court decided Petrella, a copyright case also holding laches was not a proper defense. Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014).  The district court & Federal Circuit refused to grant relief at that time — distinguishing copyright from patent law.  Subsequently the Supreme Court decided SCA Hygeine and ordered the Federal Circuit to reconsider Medinol’s case in light of the new law.  Medinol Ltd. v. Cordis Corp., 137 S.Ct. 1372 (2017).   On remand, the Federal Circuit then sent the case back to the district court to consider any extraordinary circumstances.  The district court again denied the motion for relief — holding that Medinol should have appealed the issue rather than asking for relief of judgment.  Further, although equitable defense (laches) is not effective, its underlying holding–that Medinol unreasonably delayed in bringing the lawsuit–suggests that the court should not bend-over-backwards to provide relief.  R. 60(b) relief expresses a “grand reservoir of equitable power to do justice,” but that power must be limited to only extraordinary cases.

On appeal again, the Federal Circuit has — holding that a change in the law is not sufficient alone to trigger R.60(b) relief and that relief cannot serve as a substitute for failure-to-appeal.

Of course, we do not expect parties to foresee the future when deciding whether to appeal an adverse judgment. We simply conclude that there were enough reasons supporting an appeal in this case for the district court to properly hold Medinol’s failure to appeal against it in the Rule 60(b)(6) analysis.

Slip op.

8 thoughts on “Change in the Law not Enough for R.60(b) Relief from Judgment

  1. 2

    A story on racism in patents from NPR D might want to put in bits and bytes or do a story on.

    link to

    Spoiler, it turns out my leftist instinct was CORRECT, according to her loose data, and african americans WERE withholding their inventions from patenting (or creation/disclosure etc) to prevent the white man from getting ahold of them, esp at a time when they didn’t think they would get the patent enforced and also segregation and its effects had an effect. And it turns out that 1899 was peak per capita patenting rate for african americans, the rate still has not returned to this day. And so I take it that the leftist hypothesis is now that african americans ARE still withholding their inventions from the evil white mane, and are experiencing various injustices and inequalities that are preventing them from innovating overall.

    And also she had a hard time getting her paper published because of the white persons.

    1. 2.1

      Thanks 6. Relatedly noting that if and until Congress or SCOTUS returns patent eligibility to all areas of innovation by doing away with the unconstitutional Alice and Mayo decisions (or at least reining in the gone-hog-wild Federal Circuit by getting them to properly cabin Alice and Mayo as SCOTUS intended), the opportunities for those who are least able to apply for and obtain patents will continue to be especially negatively impacted.

      Congress: Where are you?

      Black and minority inventors matter.

      #BlackInventorsMatter #MinorityInventorsMatter

  2. 1

    Thus, the law for long delayed enforcement of patents is now left in this strange situation: A patent owner who invested all the money to make an actual product based on the invention for the public can be barred from collecting any damages for any infringement before suing if any of their or licensee products are not “marked.” Whereas, now without laches, the owner of a “paper” patent for something never even built can wait to sue on a patent 20 or more years after it is knowingly or unknowingly infringed by others [even after the patent expires] and still collect infringement damages for up to 6 years before filing suit.

    1. 1.2

      Paul — how does one sue on an expired patent? Do you mean how does one collect damages post-expire . . . as long as the suit was filed pre-expire?


      1. 1.2.1

        A patent suit can be filed up to six years after a patent expires to sue for infringements occurring before the patent expires AND less than six years before suit.

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