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

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________ MEDINOL LTD., Plaintiff-Appellant v. CORDIS CORPORATION, JOHNSON & JOHNSON, Defendants-Appellees ______________________ 2019-1826 ______________________ Appeal from the United States District Court for the Southern District of New York in No. 1:13-cv-01408-ALC, Judge Andrew L. Carter. ______________________ Decided: June 12, 2020 ______________________ ELIZABETH GARDNER, Robins Kaplan LLP, New York, NY, for plaintiff-appellant. Also represented by DANIELLE ROSENTHAL; RICHARD PILDES, NYU School of Law, New York, NY.

GREGORY DISKANT, Patterson Belknap Webb & Tyler LLP, New York, NY, for defendants-appellees. Also repre- sented by EUGENE M. GELERNTER. ______________________ Case: 19-1826 Document: 41 Page: 2 Filed: 06/12/2020

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Before DYK, CLEVENGER, and HUGHES, Circuit Judges.

HUGHES, Circuit Judge.

This appeal challenges the denial of Medinol Ltd.’s re- quest to reopen a 2014 adverse final judgment under Fed- eral Rule of Civil Procedure 60(b)(6). Because the district court did not abuse its discretion in denying such relief, we affirm.

I The parties are familiar with the long procedural his- tory leading to this appeal. We described the bulk of it in our last decision in this litigation, Medinol Ltd. v. Cordis Corp., 719 F. App’x 1016 (Fed. Cir. 2018) (Medinol II).

There, on remand from the Supreme Court, we revisited the district court’s first denial of Rule 60(b)(6) relief from a 2014 final judgment dismissing Medinol’s patent infringe- ment claims as barred by the equitable defense of laches.

See Medinol Ltd. v. Cordis Corp., 137 S. Ct. 1372 (2017) (summary opinion granting certiorari, vacating, and re- manding); Medinol Ltd. v. Cordis Corp., 15 F. Supp. 3d 389 (S.D.N.Y. 2014) (Laches Opinion). The Supreme Court re- manded the case to us for further consideration in light of its decision in SCA Hygiene. 1 In SCA Hygiene, the Court held that laches is no longer a valid defense to bar damages for patent infringement, 137 S. Ct. at 967, overruling Aukerman, our longstanding precedent on which the dis- trict court relied both in dismissing Medinol’s case and in denying Medinol’s subsequent Rule 60(b)(6) motion.

After hearing oral argument, we in turn remanded the case to the district court, vacating the denial of Rule 60(b)

Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc).

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relief, which rested solely on our Aukerman precedent. Me- dinol II, 719 F. App’x at 1017; see J.A. 1166. We instructed the district court on remand to “determine whether the ‘ex- traordinary circumstances’ showing required under Rule 60(b)(6) has been established,” and we specified that as part of that analysis, the district court “should consider Medinol’s failure to appeal” the original final judgment, un- der the Supreme Court’s decision in Gonzalez v. Crosby, 545 U.S. 524, 536–38 (2005). Medinol II, 719 F. App’x at 1017.

Back before the district court, 2 Medinol filed a renewed Rule 60(b)(6) motion seeking to set aside the laches dismis- sal judgment. Medinol argued that the Supreme Court’s decisions rendered post-judgment in SCA Hygiene and Pet- rella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 667 (2014) (holding that laches is not a defense to damages for copyright infringement), constituted “extraordinary cir- cumstances” warranting such relief. J.A. 1607. Medinol further argued that its failure to appeal from the original judgment of dismissal should not preclude Rule 60(b) relief because it reasonably believed at the time that any appeal would be “futile” under existing Federal Circuit precedent.

J.A. 1626–27.

After receiving full briefing, the district court denied the motion, finding that Medinol failed to show the requi- site extraordinary circumstances. Medinol Ltd. v. Cordis Corp., No. 13-CV-1408, 2019 WL 1428342 (S.D.N.Y. Mar. 29, 2019) (District Court Decision). The district court rejected Medinol’s argument that “the nature and magni- tude of the change in law, the centrality of the changed law to the case, and the extreme and undue prejudice [Medinol]

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would suffer” justified relief from the judgment. Id. at *3.

Instead, analogizing to the circumstances in Gonzalez v. Crosby, the district court found that Medinol exhibited a lack of diligence in pursuing a direct appeal because, de- spite understanding the potential significance of the Su- preme Court’s imminent Petrella decision (regarding the availability of laches as a defense to copyright infringe- ment), Medinol voluntarily chose not to appeal. District Court Decision at *3. Further, the district court concluded that any undue prejudice or injustice Medinol might suffer from leaving the judgment in place was not extraordinary because (1) Medinol had not been denied the opportunity to try its claims, but—as found in the original dismissal or- der, see Laches Opinion, 15 F. Supp. 3d at 409—had de- layed bringing its infringement action at numerous points over 14 years, and then actively decided not to appeal the laches dismissal; and (2) any prejudice Medinol might ex- perience did not rise to the level faced by movants in prior cases where relief had been granted. District Court Deci- sion at *3. At root, the district court found this case pre- sented “a change in decisional law, and nothing more”; the court therefore denied Rule 60(b)(6) relief. Id. at *4.

Medinol appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II “When reviewing a ruling under Rule 60(b), we gener- ally defer to the law of the regional circuit in which the dis- trict court sits, here the Second Circuit, because that rule is procedural in nature and not unique to patent law.” Laz- are Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 714 F.3d 1289, 1292 (Fed. Cir. 2013) (footnote omitted).

The Second Circuit reviews a district court’s decision on a Rule 60(b) motion for abuse of discretion, which occurs when “(1) its decision rests on an error of law or a clearly erroneous factual finding; or (2) cannot be found within the range of permissible decisions.” In re Terrorist Attacks on Case: 19-1826 Document: 41 Page: 5 Filed: 06/12/2020

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Sept. 11, 2001, 741 F.3d 353, 357 (2d Cir. 2013) (quotation omitted).

Rule 60(b)(6) allows a district court to “relieve a party . . . from a final judgment, order, or proceeding” for “any . . . reason that justifies relief.” Fed. R. Civ. P. 60(b)(6). “It is a grand reservoir of equitable power to do justice in a particular case. But that reservoir is not bot- tomless. Recognizing Rule 60(b)(6)’s potentially sweeping reach, courts require the party seeking to avail itself of the Rule to demonstrate that ‘extraordinary circumstances’ warrant relief.” In re Terrorist Attacks, 741 F.3d at 356 (quoting Stevens v. Miller, 676 F.3d 62, 67 (2d Cir. 2012)); see Buck v. Davis, 137 S. Ct. 759, 777–78 (2017) (citing Gon- zalez, 545 U.S. at 535) (requiring a Rule 60(b)(6) movant to show “extraordinary circumstances” justifying reopening a final judgment). Relief is warranted under Rule 60(b)(6) “where the judgment may work an extreme and undue hardship, and [the Rule] should be liberally construed when substantial justice will thus be served.” United Air- lines, Inc. v. Brien, 588 F.3d 158, 176 (2d Cir. 2009) (quot- ing Matarese v. LeFevre, 801 F.2d 98, 106 (2d Cir. 1986)).

But under no circumstances may a party “use a Rule 60(b) motion as a substitute for an appeal it failed to take in a timely fashion.” Stevens, 676 F.3d at 67.

In this appeal, Medinol argues—as it did before the dis- trict court—that extraordinary circumstances are present because of the nature and magnitude of the Petrella / SCA Hygiene change of law regarding the availability of a laches defense, and because it would work an undue hardship and injustice for Medinol to be denied the opportunity to have its patent infringement claims tried on the merits based on the initial “ultra vires” district court judgment of dismissal.

Medinol argues that the district court abused its discretion by concluding otherwise, and legally erred by (1) failing to consider the import of the change of law, (2) “penalizing” Medinol for not taking an initial appeal when any appeal would have been “obviously futile,” and (3) violating SCA Case: 19-1826 Document: 41 Page: 6 Filed: 06/12/2020

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Hygiene by relying on the original laches finding that Me- dinol delayed bringing suit.

We see no abuse of discretion or legal error here. We can easily dispose of Medinol’s first and last ascriptions of legal error. First, we find no support for Medinol’s conten- tion that the district court failed to consider the “signifi- cance, magnitude, or nature” of the Petrella / SCA Hygiene change of law. Appellant’s Br. 20. There is no doubt that the Supreme Court’s decisions in these cases dramatically changed the legal landscape for statutory infringement ac- tions. The parties fully briefed the district court on this change of law, and the court specifically acknowledged Me- dinol’s position on the cases’ enormity and significance for the dismissed claims. District Court Decision at *3. But the district court found those factors outweighed by Medi- nol’s decision not to appeal and the absence of extraordi- nary prejudice or undue hardship. Id. And Medinol has identified no Second Circuit law requiring district courts to expressly weigh the significance and nature of a change of law when conducting Rule 60(b)(6) analyses.

Nor did the district court violate SCA Hygiene by fac- toring the timing of Medinol’s suit into its undue hardship analysis. As the district court recognized, under SCA Hy- giene, “[l]aches cannot be interposed as a defense against damages where the infringement occurred within the pe- riod prescribed by [the Patent Act, 35 U.S.C.] § 286.” Dis- trict Court Decision at *2 (quoting SCA Hygiene, 137 S. Ct. at 967) (alterations in original). The district court found that Medinol had not shown undue hardship or prejudice from having been denied the opportunity to try its claims, in part because Medinol delayed bringing its infringement action. District Court Decision at *3 (citing Laches Opin- ion, 15 F. Supp. 3d at 409). By relying on this unappealed factual finding of delay the district court was not resurrect- ing the laches defense in contravention of SCA Hygiene. Cf. Petrella, 572 U.S. at 686–87 (concluding that it was error to treat laches as a complete bar to plaintiff’s copyright Case: 19-1826 Document: 41 Page: 7 Filed: 06/12/2020

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infringement suit, but stating that if plaintiff ultimately prevailed on the merits, the district court “may take ac- count of her delay in commencing suit” when determining appropriate injunctive relief and assessing profits). The district court permissibly rejected Medinol’s argument that Medinol had been prejudiced by circumstances completely beyond its own control.

As its primary assertion of legal error, Medinol urges us to set aside the denial of Rule 60(b) relief because the district court impermissibly penalized Medinol for not tak- ing a direct appeal that Medinol characterizes as having been “futile” during the time period for seeking appellate review. We decline to do so. Appellees do not argue that a per se bar precludes Rule 60(b)(6) relief where the movant did not timely appeal the judgment sought to be vacated. And the district court did not treat Medinol’s failure to appeal the laches judg- ment as a per se bar to the Rule 60(b)(6) relief sought here.

Rather, in accordance with our remand instruction, see Me- dinol II, 719 F. App’x at 1017, the district court weighed Medinol’s decision not to appeal along with the other as- serted factors in reaching its conclusion that extraordinary circumstances were not present. District Court Decision at *3 (identifying a plaintiff’s “‘lack of diligence in pursuing review’ [as] a factor mitigating the extraordinary nature of a case” (quoting Gonzalez, 545 U.S. at 537)).

In Gonzalez, the Supreme Court affirmed the denial of Rule 60(b)(6) relief to a pro se prisoner seeking a certificate of appealability (COA) to challenge the dismissal of his pur- portedly untimely habeas corpus petition based on a post- judgment change of law regarding the interpretation of the federal habeas statute of limitations. 545 U.S. at 536–38.

The Court held that the post-judgment change of law was not an extraordinary circumstance because Mr. Gonzalez displayed a “lack of diligence in pursuing review of the stat- ute-of-limitations issue” by failing to request rehearing Case: 19-1826 Document: 41 Page: 8 Filed: 06/12/2020

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of—or seek certiorari for—the Eleventh Circuit’s denial of his COA, despite there being an active circuit conflict over the issue. Id. at 537 & n.10. The Court analogized to Ackermann v. United States, 340 U.S. 193, 195 (1950), where the Court also “affirmed the denial of Rule 60(b) re- lief, noting that the movant’s decision not to appeal had been free and voluntary,” although “it appear[ed] mistaken in hindsight.” Id. at 537–38.

Medinol contends that Gonzalez “has no bearing on the issues here” because unlike Mr. Gonzalez, Medinol had “le- gitimate, appropriate, and completely sensible reasons for not pursuing what would have been an obviously futile ap- peal.” Appellant’s Br. 26. Medinol stresses that, during the time period for taking an appeal, it had no reason to suspect that our long-standing en banc decision endorsing laches as a defense to patent infringement, Aukerman, 960 F.2d at 1029–32, might soon be overturned. Thus, Medinol says, it was error to construe its decision not to appeal as a lack of diligence.

Initially, we question the wisdom of dismissing as in- significant a case we expressly identified in Medinol II as relevant to the “extraordinary circumstances” analysis.

And although there may have been fewer indicators moti- vating Medinol to appeal its laches judgment here than were present in Gonzalez, the district court did not err by counting Medinol’s failure to appeal against it.

As the district court noted, even before the 2014 laches judgment was rendered, Medinol recognized the potential significance of the Petrella laches-copyright infringement case that was being argued at the Supreme Court during the district court’s laches-patent infringement bench trial.

Before that trial, Medinol alerted the court—in a footnote following a citation to Aukerman—that the anticipated Pet- rella decision “may have broad implications for the applica- bility of laches to other continuing torts, including patent infringement,” and it therefore reserved the right to argue Case: 19-1826 Document: 41 Page: 9 Filed: 06/12/2020

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that laches could not be applied to bar a legal claim for pa- tent infringement damages. J.A. 195 & n.1 (Medinol’s Pre- Trial Memorandum of Law). Medinol ultimately never as- serted that argument at trial, nor did it appeal from the final laches judgment. But throughout the window for di- rect appeal, Medinol remained aware—as it had been pre- judgment—that Petrella might undercut the foundation of the district court’s judgment. That Medinol freely and vol- untarily made the decision not to appeal, despite this awareness, can properly be viewed as a lack of diligence mitigating the claimed extraordinary nature of the case.

See Ackermann, 340 U.S. at 198 (“There must be an end to litigation someday, and free, calculated, deliberate choices are not to be relieved from.”); Lazare Kaplan, 714 F.3d at 1296 (noting that where Rule 60(b)(6) movants have “made a deliberate choice not to appeal or to pursue a particular litigation strategy, courts have found relief un- warranted,” and collecting Second Circuit cases); Cruick- shank & Co. v. Dutchess Shipping Co., 805 F.2d 465, 468 (2d Cir. 1986) (“Failure to properly assess the risks and po- tential gains of taking an appeal is not an extraordinary circumstance that would justify relief under [R]ule 60(b)(6).”).

Medinol’s protestations of futility ring somewhat hol- low against the hindsight knowledge that, if it had directly appealed the laches judgment, the Supreme Court in all likelihood would have taken the opportunity to overrule Aukerman—as it ultimately did when SCA Hygiene ap- pealed its similar laches judgment—thereby providing Me- dinol the relief it has been seeking instead via Rule 60(b)(6) for the past six years. Cf. Stevens, 676 F.3d at 67 (prohib- iting Rule 60(b) motions as a substitute for direct appeal).

Of course, we do not expect parties to foresee the future when deciding whether to appeal an adverse judgment. We simply conclude that there were enough reasons support- ing an appeal in this case for the district court to properly Case: 19-1826 Document: 41 Page: 10 Filed: 06/12/2020

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

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Medinol’s claims. That the district court could not permis- sibly render the same judgment today just reinforces that Medinol’s Rule 60(b)(6) request relies primarily on a mere post-judgment change of law.

We also perceive no abuse of discretion in the district court’s rejection of the remaining factors Medinol asserted.

We will not disturb the district court’s assessment of Medi- nol’s inability to try its claims on the merits and loss of op- portunity to recover large sums in damages as presenting a lesser injustice than in cases involving judicial bias, ra- cially tinged criminal convictions, or deportation conse- quences. See District Court Decision at *3.

III Because the district court did not abuse its discretion in deciding that Medinol’s Rule 60(b)(6) motion fails to set forth “extraordinary circumstances” justifying relief, we af- firm the judgment of the district court.

AFFIRMED