Opposition Brief — Princeton Digital Image Corporation, Petitioner v. Adobe Inc.

No. 18-1343

In the

Supreme Court of the United States

PRINCETON DIGITAL IMAGE CORPORATION,

Petitioner,

V.

ADOBE INC., ET AL.,

Respondents.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF IN OPPOSITION

MELISSA ARBUS SHERRY

Counsel of Record

TARA D. ELLIOTT

SAMIR DEGER-SEN

LATHAM & WATKINS LLP

555 Eleventh Street, NW

Suite 1000

Washington, DC 20004

(202) 637-2200

melissa.sherry@lw.com

Counsel for Respondent Adobe Inc.

QUESTIONS PRESENTED

Petitioner asks the Court to grant review on two

questions:

1. Whether there can be any further proceedings

in the district court following the dismissal of an

appeal on the ground that it is not a “final decision”

within the meaning of 28 U.S.C. §§ 1291 and 1295.

2. Whether a court of appeals, after finding that

there is no “final decision” conferring appellate

jurisdiction and dismissing a primary appeal, is

nonetheless required to consider the merits of a crossappeal.

If the Court grants the petition, it should also add

the following question, which is “predicate to an

intelligent resolution of the question[s] presented,”

Caterpillar Inc. v. Lewis, 519 U.S. 61, 75 n.13 (1996)

(citation omitted):

3. Whether a court of appeals has appellate

jurisdiction when a party consents to judgment

because a district court’s prior legal holding makes it

impossible to prevail on the merits of its claims.

ii

RULE 29.6 STATEMENT

Respondent Adobe Inc. is a publicly traded

company. No publicly held company owns 10 percent

or more of Adobe Inc.’s stock.

iii

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED ....................................... i

RULE 29.6 STATEMENT.......................................... ii

TABLE OF AUTHORITIES ...................................... iv

INTRODUCTION .......................................................1

STATEMENT OF THE CASE ....................................1

REASONS FOR DENYING THE PETITION............8

I.

THE FIRST QUESTION PRESENTED

DOES NOT WARRANT THIS COURT’S

REVIEW ...............................................................8

A. The Federal Circuit Correctly Recognized

The Natural Consequences Of A

Dismissal For Lack Of Finality .....................9

B. There Is No Circuit Conflict .......................13

C. This Case Is An Exceptionally Bad

Vehicle ........................................................18

II. THE SECOND QUESTION PRESENTED

DOES NOT WARRANT THIS COURT’S

REVIEW .............................................................21

CONCLUSION ..........................................................22

iv

TABLE OF AUTHORITIES

Page(s)

CASES

Adarand Constructors, Inc. v. Mineta,

534 U.S. 103 (2001) ..............................................21

Board of Trustees of the Cincinnati

Plumbing & Pipe Fitting Industry

Promotion Trust Fund v. Humbert,

768 F. App’x 317 (6th Cir. 2019) .........................17

Board of Trustees of Plumbers, Pipe Fitters

& Mechanical Equipment Service, Local

Union No. 392 v. Humbert,

884 F.3d 624 (6th Cir. 2018)..........................16, 17

Camesi v. University of Pittsburgh Medical

Center,

729 F.3d 239 (3d Cir. 2013) ..................... 11, 13, 14

Caterpillar Inc. v. Lewis,

519 U.S. 61 (1996) ............................................ i, 19

Catlin v. United States,

324 U.S. 229 (1945) ................................................6

Cohen v. Virginia Electric & Power Co.,

788 F.2d 247 (4th Cir. 1986)................................12

Coughlin v. Regan,

768 F.2d 468 (1st Cir. 1985) ................................12

v

TABLE OF AUTHORITIES—Continued

Page(s)

Dorse v. Armstrong World Industries, Inc.,

798 F.2d 1372 (11th Cir. 1986)............................12

Downey v. State Farm Fire & Casualty Co.,

266 F.3d 675 (7th Cir. 2001)................................12

Fairley v. Andrews,

578 F.3d 518 (7th Cir. 2009).................... 14, 15, 18

Huey v. Teledyne, Inc.,

608 F.2d 1234 (9th Cir. 1979)..............................20

Keefe v. Prudential Property & Casualty

Insurance Co.,

203 F.3d 218 (3d Cir. 2000) .................................15

Keena v. Groupon, Inc.,

886 F.3d 360 (4th Cir. 2018)................................16

Microsoft Corp. v. Baker,

137 S. Ct. 1702 (2017)..................................6, 7, 11

Mock v. T.G. & Y. Stores Co.,

971 F.2d 522 (10th Cir. 1992)..............................12

Slaven v. American Trading Transportation

Co.,

146 F.3d 1066 (9th Cir. 1998)..............................12

Union Oil Co. of California v. John Brown

E&C,

121 F.3d 305 (7th Cir. 1997)................................17

vi

TABLE OF AUTHORITIES—Continued

Page(s)

Union Oil Co. of California v. John Brown

E&C,

No. 94 C 4424, 1998 WL 100325 (N.D.

Ill. Feb. 23, 1998) .................................................17

Van Cauwenberghe v. Biard,

486 U.S. 517 (1988) ................................................9

Verzilli v. Flexon,Inc.,

295 F.3d 421 (3d Cir. 2002) ..................... 12, 15, 17

Xlear, Inc. v. Focus Nutrition, LLC,

893 F.3d 1227 (10th Cir. 2018)............................20

STATUTES

28 U.S.C. § 1291 .............................................. i, 13, 16

28 U.S.C. § 1295 .........................................i, 6, 8, 9, 18

35 U.S.C. § 285 ....................................................2, 3, 5

OTHER AUTHORITIES

Federal Rule of Civil Procedure 11 ............................3

15A Charles Alan Wright et al., Federal

Practice and Procedure (2d ed., Westlaw

2019) .....................................................................12

INTRODUCTION

Petitioner asks this Court to grant review based

on mischaracterizations of the record, the Federal

Circuit decision, and the case law. Petitioner says

that it had “no basis to oppose” the stipulated

judgment (Pet. 7), but petitioner in fact told the

district court that an appeal was appropriate and

agreed to and drafted the judgment itself—which

affirmed both parties’ appeal rights three times over.

Petitioner suggests that this case is about Article III

jurisdiction, but the Federal Circuit dismissed solely

on statutory finality grounds. And while petitioner

asserts a circuit conflict, there is none. No court of

appeals has precluded further proceedings in the

district court in these circumstances—nor would the

equities allow it. Further review of petitioner’s

questions presented is not warranted.

STATEMENT OF THE CASE

1. During the relevant time period, petitioner

Princeton Digital Image Corporation (“PDIC”) owned

U.S. Patent No. 4,813,056 (“the ’056 patent”). In June

2011, petitioner licensed the ’056 patent to

respondent Adobe Inc. Pet. App. 2a. In the licensing

agreement, petitioner made a number of promises,

including not to sue Adobe or Adobe’s customers for

claims arising “in whole or part owing to an Adobe

Licensed Product.” Id. (citation omitted).

2. In December 2012, petitioner filed the first of

51 nearly identical patent infringement actions

against various defendants, most of which were

2

Adobe’s customers for their use of Adobe’s products.

Pet. App. 2a; see, e.g., CAJA1001-03.1

a. After Adobe threatened to intervene, petitioner

told the district court it would dismiss the

infringement claims against all of Adobe’s customers.

CAJA2220-28. Petitioner conceded that even the

“slim window of possible infringement” was foreclosed

by the express terms of the licensing agreement.

CAJA2220. And petitioner explained that it had

“assured” Adobe “that [it] intend[s] to honor [its]

agreement,” does “not intend to go after [Adobe’s]

customers,” and is “not going to violate that

agreement.” CAJA2227-28. Petitioner dismissed its

suit against one of Adobe’s customers, but refused to

dismiss the others at that time.

b. In May 2015, Adobe intervened to defend nine

of its customers that had been sued by petitioner. Pet.

App. 2a-3a. Adobe alleged that the infringement suits

violated the terms of the licensing agreement and

covenant not to sue. Id. at 3a. And Adobe sought

damages in the form of the attorneys’ fees it expended

defending the rights of its customers. Id. Petitioner

filed answers in eight of the cases, and was eventually

sanctioned with a small attorneys’ fees award for

failure to timely file an answer in the ninth case. See

CAJA116.

About two months later, petitioner

voluntarily dismissed all nine infringement suits.

Pet. App. 3a. Adobe’s breach of contract claim

remained.

c. In August 2015, Adobe moved for attorneys’

fees under 35 U.S.C. § 285 and sanctions under

1

Citations to “CAJA” refer to the Joint Appendix filed below

in Princeton Digital Image Corp. v. Office Depot Inc., No. 17-2597

(Fed. Cir. Apr. 10, 2018), ECF No. 62.

3

Federal Rule of Civil Procedure 11. The district court

found it troubling that petitioner “contracted to

license Adobe and Adobe’s customers,” and “then

decided to sue some of those very customers.”

CAJA33. The court also found that petitioner’s

“counsel did not learn of the Adobe License prior to

filing suit,” “did not undertake any independent

investigation,” and generally made “minimal efforts

(both pre and post suit) to develop facts related to

infringement.” CAJA27-28, 33. The court further

found it “hard-to-believe” that petitioner had “no

intent to accuse any licensed conduct of

infringement.” CAJA40. And the court agreed that

these findings made petitioner’s conduct “exceptional”

under 35 U.S.C. § 285. Id. The district court

nevertheless denied Adobe’s request for both fees and

sanctions. CAJA37.

d. In August 2017, the district court denied

petitioner summary judgment on Adobe’s breach of

contract claim. CAJA70. But the court also held that,

at trial, Adobe’s damages would be limited to “defense

fees,” which the court defined as only those fees Adobe

“incurred in defending [its customers] from

[petitioner’s] infringement suit.” CAJA64. The court

held that Adobe could not recover “any attorney fees

[it] incurred in the affirmative breach-of-contract

suit.” Id.

In response, Adobe submitted a supplemental

expert report that calculated “defense fees” (as it

understood that phrase) to include the fees expended

up until the time the claims against the last of its

customers who requested indemnification were

dismissed. CAJA4261-68. As Adobe explained, while

its customers remained defendants in the patent

infringement actions, all of the fees it expended were

4

necessarily in service of ensuring that the claims

against them were dismissed. Id. The district court

disagreed and struck the report because, in the court’s

view, it did not adequately “separate Adobe’s defense

fees from its affirmative fees.” CAJA82. The court

demanded that Adobe submit a new report with a

“purely defensive” number. CAJA86-87.

Adobe tried again. This time Adobe submitted a

supplemental report in which it went line by line

through its bills in an attempt to isolate these “purely

defensive” fees, and explained that all of the fees so

isolated were “inextricably intertwined” with the

defense of its customers. CAJA5059-64. But, on the

morning of trial, the district court struck that report

too. CAJA5203-05. The court explained that, while it

believed “that some amount of Adobe’s legal fees are

purely defensive,” the latest report still had not

separated out such fees. CAJA5205. The court did

not identify what “purely defensive” fees might be.

Nor did it give any guidance as to how Adobe could

distinguish “purely defensive” fees from so-called

“affirmative fees” which were “inextricably

intertwined”

with

“purely

defensive

fees.”

CAJA5203-05.

Adobe concluded that, under the district court’s

construction of the law requiring it to separate

“purely defensive” fees from fees “inextricably

intertwined” with defensive fees, it could not identify

any fees that fell exclusively into the former category.

This meant that, under the district court’s legal

rulings, Adobe could not meet its burden to prove the

damages element of its breach of contract claim.

Adobe thus concluded that it would be subject to

judgment as a matter of law if it went to trial.

5

e. Recognizing that it would be legally unable to

prove its claim at trial, Adobe agreed to a stipulated

judgment that expressly reserved its right to appeal.

So did petitioner, who also wished to appeal certain

rulings related to attorneys’ fees. Petitioner told the

district court that the “appropriate method of

handling” the situation would be “similar to the

situations in patent cases where . . . [the court]

renders a claim construction ruling [and] the other

side concedes it can’t prove infringement on th[at]

basis . . . and so judgment is entered . . . without

prejudice to” appealing the court’s earlier ruling.

CAJA5227. And petitioner took the position that

“judgment for [it] is appropriate, and then [Adobe] can

appeal from that.” Id.

Petitioner also drafted the stipulated judgment

that the district court ultimately entered. The final

judgment stated that Adobe had “advised the Court

that judgment is in order from which Adobe can take

appeal”; that “Adobe’s request for entry of final

judgment is GRANTED, without prejudice to Adobe’s

ability to appeal”; and that “Adobe and [petitioner]

expressly reserve the right to appeal from this

judgment, including any interlocutory orders of the

Court.” CAJA108 (petitioner’s draft judgment); Pet.

App. 29a-30a (court-entered judgment).

3. As the parties had agreed, Adobe appealed. On

appeal, Adobe challenged the district court’s legal

ruling that rendered it unable to prove the damages

element of its contract claim, as well as the court’s

denial of attorneys’ fees under 35 U.S.C. § 285 and

Rule 11 sanctions. Petitioner, in turn, filed a crossappeal of its attorneys’ fees sanction. CAJA116, 164.

a. For the first time on appeal, and contrary to its

statements in the district court and the judgment it

6

drafted, petitioner argued that the appeal was

improper because there was no final appealable order.

Specifically, petitioner argued that, under this

Court’s decision in Microsoft Corp. v. Baker, 137 S. Ct.

1702 (2017), stipulating to an adverse judgment

“could not ‘transform a tentative interlocutory order

. . . into a final judgment within the meaning of [28

U.S.C. § 1295]’” and that, accordingly, the Federal

Circuit lacked jurisdiction. Opening and Response

Br. 29, Princeton Digital Image Corp. v. Office Depot

Inc., No. 17-2597 (Fed. Cir. Jan. 23, 2018), ECF No.

31 (“Cross-Appellant’s Br.”) (omission in original)

(quoting Microsoft, 137 S. Ct. at 1715). And, again

contrary to what it told the district court, petitioner

argued that this appeal was “different” than the

appeal of a claim construction ruling because, in the

latter context, the court’s decision “is dispositive and

effectively ends the case,” whereas here the district

court’s rulings “did not preclude Adobe from going

forward.” Id. at 32.

b. The Federal Circuit agreed with petitioner,

held that the judgment was not “final” within the

meaning of § 1295, and dismissed the appeal for lack

of appellate jurisdiction. Pet. App. 15a-17a.

The Federal Circuit acknowledged that a “final

decision” has long been defined as “a decision by the

district court that ‘ends the litigation on the merits

and leaves nothing for the court to do but execute the

judgment.’” Pet. App. 6a (quoting Catlin v. United

States, 324 U.S. 229, 233 (1945)). But the court

explained that, in Microsoft, this Court held that a

voluntary dismissal entered into for the purpose of

securing appellate review of a class certification order

“subverts the final-judgment rule” and thus “does not

give rise to a ‘final decision.’” Id. at 8a (quoting

7

Microsoft, 137 S. Ct. at 1712-13). The court reasoned

that Microsoft “extends beyond” the class certification

context to any case where a plaintiff stipulates to an

adverse judgment in order to obtain review of an

otherwise interlocutory decision. Id. at 9a. And the

court further held that, “unless the district court has

conclusively determined . . . that the plaintiff has

failed to satisfy a required element of the cause of

action, a voluntary dismissal lacks finality.” Id. at

13a. The court believed that Adobe “could still have

proceeded to trial on its breach claim,” and held that

it “was required to do so to obtain a final decision on

the merits that could be appealed.” Id. at 14a.

The Federal Circuit then briefly addressed

Adobe’s argument that “the district court’s judgment

here” should “qualif[y] as a ‘final decision’ because

‘there is no action remaining for the district court to

take.’”

Id. at 15a (quoting Appellant’s CAFC

Response/Reply Br. 4, ECF No. 42). The court held

that, under Microsoft, “the fact that [Adobe]

‘persuade[d] [the] district court to issue an order

purporting to end the litigation’ does not create

finality.”

Id. (alterations in original) (quoting

Microsoft, 137 S. Ct. at 1715). Instead, the court

explained, “the purported final judgment is

ineffective, [and] the district court must treat the case

as though final judgment had never been entered.”

Id. In the court’s view, there were “further steps

remaining for the district court to take,” such as

“determin[ing] whether [petitioner] breached its

license agreement with Adobe, and if so . . . the

damages (actual or nominal) to which Adobe is

entitled.” Id. And because there was no effective final

judgment, the court reasoned, “the case must

8

continue until there is a final disposition of the breach

claim, at which point there can be an appeal.” Id.

Based on its determination that there was “no

final judgment in the case,” the Federal Court held

that it also “lacked jurisdiction” to consider Adobe’s

objections to the district court’s denial of attorneys’

fees and sanctions, as well as petitioner’s crossappeal, because the challenged orders preceded any

final judgment. Id. at 15a-17a.

4. On February 22, 2019, petitioner filed an

untimely petition for rehearing, which the Federal

Circuit denied. Princeton Digital Image Corp. v.

Office Depot Inc., No. 17-2597 (Fed. Cir.), ECF Nos.

89, 96.

REASONS FOR DENYING THE PETITION

I. THE FIRST QUESTION PRESENTED DOES

NOT WARRANT THIS COURT’S REVIEW

Petitioner asks this Court to grant review to

decide whether a court of appeals “may vacate a

district court’s consent final judgment and instruct

the district court to revive the case, after dismissing

[an] appeal for lack of appellate jurisdiction.” Pet. i.

Here, the Federal Circuit dismissed the appeal for

lack of appellate jurisdiction because it believed that

the judgment was not “final” within the meaning of

§ 1295. Pet. App. 15a-17a. The Federal Circuit then

correctly recognized that when a judgment is not

“final” there is, by definition, more for the district

court to do. That decision does not implicate any

conflict among the courts of appeals. And this case is

not a suitable vehicle to resolve that question

regardless.

9

A.

The

Federal

Circuit

Correctly

Recognized The Natural Consequences

Of A Dismissal For Lack Of Finality

1. The jurisdictional issue on appeal was whether

the final judgment petitioner drafted that expressly

reserved Adobe’s (and petitioner’s) right to appeal

was in fact “final” within the meaning of § 1295. As

this Court has explained, “a ‘final decision’” for

purposes of appellate review occurs when there is “no

action remaining” for the district court to take. Pet.

App. 15a (citation omitted); see Van Cauwenberghe v.

Biard, 486 U.S. 517, 521-22 (1988). For the first time

on appeal, petitioner disputed whether there was a

“final judgment within the meaning of § 1295” (i.e.,

whether there was “action remaining” for the district

court to take), and the Federal Circuit ultimately

agreed with petitioner’s newfound position. That is

why the Federal Circuit held that the judgment was

“ineffective” and not “final,” and why it dismissed for

lack of appellate jurisdiction. Pet. App. 15a-17a.

The single paragraph in the decision that

petitioner challenges is the necessary, logical, and

equitable corollary of that holding. The judgment was

deemed “ineffective” and not “final” because the

Federal Circuit believed that there were “further

steps remaining for the district court to take,” such as

“determin[ing] whether [petitioner] breached its

license agreement with Adobe, and if so . . . the

damages (actual or nominal) to which Adobe is

entitled.” Pet. App. 15a. If that were not the case—

i.e., if there were no “steps remaining”—then the

judgment should have been treated as “final” and the

Federal Circuit should have exercised appellate

jurisdiction.

10

Put another way, petitioner cannot have it both

ways. Either there was “no action remaining” for the

district court to take, in which case the Federal

Circuit should not have dismissed the appeal, or there

was “action remaining” for the district court to take,

in which case the Federal Circuit correctly dismissed

the appeal but also correctly acknowledged that there

were “steps remaining for the district court to take.”

If petitioner wants to defend the Federal Circuit’s

jurisdictional ruling, then it has to accept the natural

consequences that flow from the dismissal.

2. Petitioner makes no real attempt to explain

why there should not be further proceedings in the

district court after dismissal on lack of statutory

finality grounds. Instead, petitioner relies on a

different argument: that Adobe’s consent to judgment

destroyed adversity and rendered any dispute

between the parties moot. Pet. 8-11. That distinct

argument, which was not addressed by the Federal

Circuit, is equally without merit.

Petitioner presents the two arguments—finality

under § 1295 and mootness under Article III—as if

there were no difference between them. But the

consequences of a dismissal for lack of statutory

finality is not the same as a dismissal for lack of

adversity under Article III. The former deprives only

an appellate court of jurisdiction (and necessarily

contemplates continuing jurisdiction in the district

court), while the former deprives the federal courts of

jurisdiction altogether. Here, the Federal Circuit did

not dismiss the appeal as moot; it dismissed the

appeal for lack of finality. The decision says nothing

about mootness—indeed, the word “moot” is not in the

opinion at all. There is no Federal Circuit holding on

11

that question, and thus no basis for this Court to

grant review.

That the Federal Circuit did not dismiss the

appeal on Article III grounds is hardly surprising.

For one thing, petitioner did not seriously press a

mootness argument on appeal. The sum total of

petitioner’s briefing on “mootness” was a block quote

from Camesi v. University of Pittsburgh Medical

Center, 729 F.3d 239 (3d Cir. 2013), without any

explanation of its relevance.2 The Federal Circuit

understandably appears to have assumed that

petitioner was relying solely on the purported lack of

finality under this Court’s opinion in Microsoft Corp.

v. Baker, 137 S. Ct. 1702 (2017).

For another, there is simply no merit to

petitioner’s assertion that the appeal should have

been dismissed as moot. Under well-established case

law, a stipulated judgment does not moot a case if the

plaintiff expressly reserves its right to appeal—as

2

The entirety of the discussion regarding mootness in

petitioner’s brief in the Federal Circuit is as follows:

The Third Circuit further explained that, having

voluntarily obtained an adverse judgment that was

unappealable, the appellant’s case was gone forever:

The claims that Appellants dismissed with

prejudice are gone forever—they are not

reviewable by this Court and may not be

recaptured at the district court level. ... As

such, Appellants’ individual claims are moot.

Id. at 247.

The Baker/Camesi decisions are fully applicable

here.

Cross-Appellant’s Br. 30.

12

Adobe did here. See 15A Charles Alan Wright et al.,

Federal Practice and Procedure § 3902 (2d ed.,

Westlaw 2019) (although those who “have consented

to entry of a judgment at times are said to lack

standing,” “[t]he true principle at work . . . is one of

waiver,” and “an express agreement reserving the

right to appeal will be honored”); Verzilli v. Flexon,

Inc., 295 F.3d 421, 423 (3d Cir. 2002) (“Those who

have consented to entry of a judgment are sometimes

said to lack standing [but when] a party expressly

reserves the right to appeal, the appellate court may

review the contested issue.”); Downey v. State Farm

Fire & Cas. Co., 266 F.3d 675, 683 (7th Cir. 2001)

(“Almost every circuit that has considered the issue

has held that an express reservation of the right to

appeal avoids waiver of contested issues that had

been resolved earlier in the litigation.”).3 In short,

even if the Federal Circuit had considered the issue,

there would have been no reason to deem the case

moot—either on appeal or on remand to the district

court.4

3

See also, e.g., Coughlin v. Regan, 768 F.2d 468, 470 (1st

Cir. 1985); Cohen v. Virginia Elec. & Power Co., 788 F.2d 247,

249 (4th Cir. 1986); Slaven v. American Trading Transp. Co., 146

F.3d 1066, 1070 (9th Cir. 1998); Mock v. T.G. & Y. Stores Co.,

971 F.2d 522, 526 (10th Cir. 1992); Dorse v. Armstrong World

Indus., Inc., 798 F.2d 1372, 1375 (11th Cir. 1986).

4

Although petitioner attempts to invoke the concurring

opinion in Microsoft as a basis upon which the Federal Circuit

should have dismissed for lack of Article III jurisdiction (Pet. 15),

the only mention of this argument below was in a passing

footnote. Cross-Appellant’s Br. 29 n.2. The decision below does

not discuss (or even cite) Microsoft’s concurring opinion. And, in

any event, the concurring opinion in Microsoft does not address

13

B.

There Is No Circuit Conflict

Petitioner claims that there is a circuit conflict

that warrants the Court’s review. But it identifies a

mere two decisions—one of which petitioner can

characterize only as an “implicit” holding (Pet. 13).

Neither case conflicts with the Federal Circuit’s

decision. The disposition here is entirely consistent

with the practice in other courts of appeals (including

the Third Circuit). And the dearth of case law

speaking directly to the question presented further

confirms that the Court’s review is not warranted.

1. To establish a circuit split, petitioner relies

primarily on Camesi. But the portion of Camesi

petitioner cites addresses only the issue of

mootness—and, as discussed above, the Federal

Circuit’s decision contained no holding on (or even

mention of) mootness. So there is no actual split.

But there is also no conflict between the result

below and the holding in Camesi. Camesi was a

consolidated appeal from two putative collective

actions. 729 F.3d at 244. After the district court

denied class certification, the named plaintiffs elected

to “voluntar[ily] dismiss[] . . . their claims with

prejudice in order to secure a final judgment for

purposes of appeal.” Id. (record citation omitted). On

appeal, the Third Circuit held that “plaintiffs lack

final orders appealable under 28 U.S.C. § 1291.” Id.

at 242.

The court of appeals then considered “an

alternative” argument—“namely that, even if [the

court] were to find finality, Appellants’ voluntary

whether there is continuing adversity when a party expressly

reserves its right to challenge a claim on its merits—as opposed

to a collateral issue like class certification. See infra 14-15.

14

relinquishment of their individual claims ha[d]

rendered the cases moot.” Id. at 247. The court stated

that although the plaintiffs “apparently believe[d]

that reversal of the District Courts’ decertification

orders on appeal would resurrect their individual

claims once again at the district court level,” those

claims were “gone forever”—they were “not

reviewable by this Court and may not be recaptured

at the district court level.” Id.

Camesi thus involved the total abandonment of

the plaintiffs’ individual claims—i.e., the plaintiffs

had not challenged any legal ruling relating to the

merits of those claims. While the plaintiffs reserved

their right to “revive” their individual claims if they

prevailed on the collateral question of class

certification, they did not reserve the right to appeal

any legal ruling relating to the merits. There was

thus no point of disagreement (i.e., no adversity)

between the parties as to whether the individual

claims were valid. Camesi holds only that when a

putative class representative has totally abandoned

their individual claims to pursue appellate review of

a class certification order—and has done so without

reserving the right to appeal the merits of those

individual claims—the individual claims are moot.

729 F.3d at 247.

Camesi simply does not apply where, as here, the

parties fundamentally disagree (i.e., remain adverse)

on the merits of the claims. Indeed, Camesi favorably

cites the Seventh Circuit’s decision in Fairley v.

Andrews, 578 F.3d 518, 522 (7th Cir. 2009), where the

court found that a stipulated judgment did not moot

the case because the parties continued to contest a

matter central to the merits. 729 F.3d at 247. In

Fairley, the plaintiffs disputed a pre-trial decision by

15

the district court, “but acknowledged that, given the

ruling, they could not prove their case.” 578 F.3d at

521. And the district court entered a voluntary

dismissal, so that the plaintiffs could “take it all up to

the Seventh Circuit.” Id. On appeal, the defendants

argued for a broad rule “bar[ring] appeals from

actions terminated” through a voluntary dismissal—

but the Seventh Circuit rejected that approach. Id. at

522. As the court explained, “[a]cknowledging that a

case is hopeless, given a prior ruling (which the party

believes to be unsound), is a far cry from abandoning

the suit.” Id.

That Camesi did not adopt a categorical rule on

mootness is further confirmed by other Third Circuit

case law. In Keefe v. Prudential Property & Casualty

Insurance Co., the Third Circuit squarely addressed

the “appealability of a consent judgment where the

party seeking to appeal has made explicit in a

stipulation its intent to appeal the . . . judgment.” 203

F.3d 218, 223 (3d Cir. 2000). After an adverse ruling

on a question of law, the defendant there stipulated

to judgment with an express reservation of its right to

appeal the adverse ruling. “Adopting th[e] approach”

of its “sister circuits,” the Third Circuit “held that a

party to a consent decree or other judgment entered

by consent may appeal from that decree or judgment

if it explicitly reserves the right to do so.” Id. And the

court recognized that, in light of the reservation, “the

parties remain adverse and . . . th[e] appeal presents

a genuine case or controversy under Article III of the

Constitution.” Id. at 220. The Third Circuit later reaffirmed that holding in Verzilli. See 295 F.3d at 421.

Nothing in Camesi suggests that it was creating

an intra-circuit conflict. Nor would such a conflict

warrant this Court’s review.

16

2. There is likewise no conflict with any “implicit”

holding in Keena v. Groupon, Inc., 886 F.3d 360 (4th

Cir. 2018). There, a plaintiff voluntarily dismissed

her claims in order to secure an appeal of the district

court’s interlocutory ruling enforcing an arbitration

agreement.

The Fourth Circuit held that “the

Dismissal Order secured by [the plaintiff] is not an

appealable final decision under 28 U.S.C. § 1291,” and

“[a]ppellate jurisdiction is therefore lacking.” Id. at

365.

Petitioner claims a conflict based solely on the fact

that the Fourth Circuit did not discuss whether the

plaintiff’s consent to judgment foreclosed “further

action in the district court.” Pet. 13. Aside from the

illusory nature of the purported “conflict,” the

discussion petitioner says was missing would have

made no sense. The district court had already issued

an order to compel arbitration. Hence, any “further

action” would have occurred in arbitration, not in the

district court. And whether the stipulated judgment

would have precluded the plaintiff’s claims in

arbitration is (unsurprisingly) not an issue the Fourth

Circuit addressed.

3. Far from creating a conflict, the challenged

paragraph in the Federal Circuit’s decision is entirely

consistent with the practice in other circuits. That is,

when a court of appeals concludes that it lacks

appellate jurisdiction because the judgment is not

“final,” the case often goes back to the district court

for further proceedings.

For example, in Board of Trustees of Plumbers,

Pipe Fitters & Mechanical Equipment Service, Local

Union No. 392 v. Humbert, the parties entered into a

“Stipulated Judgment Order,” but “agree[d] to the

entry of . . . judgment for the sole purpose of

17

proceeding with the appeal.” 884 F.3d 624, 625 (6th

Cir. 2018). The Sixth Circuit dismissed the appeal for

lack of jurisdiction, holding that the stipulated

judgment was “not final.” Id. at 626. But the Sixth

Circuit’s order dismissing for lack of appellate

jurisdiction did not foreclose the parties from

continuing the case on remand—which they did, and

then appealed again after final judgment. See Bd. of

Trustees of the Cincinnati Plumbing & Pipe Fitting

Indus. Promotion Tr. Fund v. Humbert, 768 F. App’x

317, 318 (6th Cir. 2019) (“Our court dismissed those

appeals because at the time the district court’s

judgment was not yet final. The district court has

since entered a final judgment, which Local 392 again

appeals and Services cross-appeals.” (citation

omitted)).

The Seventh Circuit did the same in Union Oil Co.

of California v. John Brown E&C, 121 F.3d 305, 312

(7th Cir. 1997), and the case continued on remand.

See Union Oil Co. of Cal. v. John Brown E&C, No. 94

C 4424, 1998 WL 100325, at *1 (N.D. Ill. Feb. 23,

1998) (noting that after the Seventh Circuit’s

dismissal, “[t]he parties then returned to settlement

negotiations and hearings,” in addition to motions

practice). And while petitioner asserts a conflict with

the Third Circuit, there too cases have returned to the

district court for further proceedings after being

dismissed for lack of a final judgment. E.g., Verzilli

295 F.3d at 425 (dismissing for lack of appellate

jurisdiction); Verzilli v. Flexon, Inc., No. 2:98-cv00886-IJS (W.D. Pa. 2002), ECF No. 100 (reopening

case, followed by several months of proceedings).

18

C.

This Case Is An Exceptionally Bad

Vehicle

This case is also an exceptionally bad vehicle. Not

only is there a predicate question that would further

complicate the Court’s review, there are also

independent and case-specific reasons to allow

proceedings to continue below.

1. Review in this case would be particularly

complicated because the questions presented

necessarily

rest

on

the

Federal

Circuit’s

determination that the stipulated judgment was not

a “final decision” within the meaning of 28 U.S.C.

§ 1295.

Adobe continues to believe that this

determination was wrong.5 And that issue is the

logical predicate to the question on which petitioner

seeks further review.

This Court should not assess the validity of the

Federal Circuit’s explication of what remains for the

district court, while leaving its ultimate conclusion as

to finality untouched. That petitioner spends the first

section of its argument explaining why, in its view,

the Federal Circuit “properly” applied the logic of

Microsoft and dismissed Adobe’s appeal, confirms as

much. Pet. 7-9. As explained above, the Federal

Circuit held that there was a no “final decision”

5

Unlike in Microsoft, Adobe did not abandon its individual

claims in order to expedite review of a collateral issue. Adobe

recognized that it could not prove an element of its claim under

the district court’s prior legal rulings. As the Seventh Circuit

explained in Fairley, “[a]cknowledging that a case is hopeless,

given a prior ruling (which the party believes to be unsound), is

a far cry from abandoning the suit.” 578 F.3d at 522. Nothing

in Microsoft suggests that a plaintiff must litigate the merits of

its claims under a legal ruling that makes recovery impossible.

19

because it believed there were “steps remaining” for

the district court to take. That holding was the

predicate for the challenged paragraph, which

detailed what those remaining steps in fact were. If

there were no such steps, then the Federal Circuit

should have deemed the judgment “final” and

retained appellate jurisdiction.

An issue “‘predicate to an intelligent resolution’ of

the question presented” is “‘fairly included’ within

[it].” Caterpillar Inc. v. Lewis, 519 U.S. 61, 75 n.13

(1996) (citation omitted). Accordingly, if the Court

grants review, Adobe intends to argue that, if the

stipulated judgment remains effective for purposes of

ending proceedings in the district court, it must also

be effective for purposes of securing appellate

jurisdiction under 28 U.S.C. § 1295. The fact that a

discrete question regarding the applicability of

Microsoft to the non-class setting is enmeshed in

review of the questions presented strongly counsels

against review.6

2. This case is also an unsuitable vehicle because

dismissing Adobe’s claims in their entirety would

have been improper for other, case-specific reasons.

The stipulation to enter final judgment was made

jointly by the parties with petitioner’s express

agreement that appellate review could be sought.

6

If the petition is nonetheless granted, the Court should

consider adding the following question:

Whether a court of appeals has appellate jurisdiction

when a party consents to judgment because a district

court’s prior legal holding makes it impossible to

prevail on the merits of its claims.

20

Indeed, petitioner told the district court that, under

its understanding of the law, a joint stipulation to

judgment here would function just like a stipulated

judgment following an adverse claim construction

ruling—and would permit appellate review. And

petitioner actually drafted the stipulated judgment

entered by the district court which says—no less than

three times—that Adobe had a right to appeal. See

Pet. App. 29a-30a.

On appeal, petitioner suddenly reversed course

and argued—for the first time and contrary to its

prior statements—that Adobe could not appeal and

that the situation was not analogous to an adverse

claim construction decision. And if that was not bad

enough, petitioner asks this Court to grant review to

hold that, not only could Adobe not appeal, it had in

fact unwittingly given up its claims “forever.” Pet. 5

(citation omitted).

Petitioner makes this argument even though the

Federal Circuit’s application of Microsoft was at the

very least debatable, if not flat out wrong. See supra

note 5; see also, e.g., Xlear, Inc. v. Focus Nutrition,

LLC, 893 F.3d 1227, 1236 (10th Cir. 2018) (limiting

Microsoft to the “narrow situation” of dismissals to

obtain review of class certification orders). Adobe

reasonably believed the stipulated judgment would

confer appellate jurisdiction. And so did petitioner—

when it was convenient.

In these circumstances, the only equitable result

would be to allow for further district court

proceedings. See, e.g., Huey v. Teledyne, Inc., 608 F.2d

1234, 1240 (9th Cir. 1979) (remanding so “the district

court may reconsider the dismissal” in light of court’s

holding that parties’ consent to judgment did not

21

permit review of interlocutory order). And those same

equities make this Court’s intervention unnecessary.

II. THE SECOND QUESTION PRESENTED

DOES NOT WARRANT THIS COURT’S

REVIEW

The petition also half-heartedly raises a second

question about whether a cross-appellant may

proceed with its appeal even when an appellate court

has held that there is no “final” decision within the

meaning of § 1295. Review of this question is also

unwarranted.

This Court does not generally grant review to

decide issues of first impression. See Adarand

Constructors, Inc. v. Mineta, 534 U.S. 103, 110 (2001)

(this is not a Court of “first view” (citation omitted)).

Yet, petitioner asks the Court to do just that. It does

not identify a single case where a court has permitted

a cross-appeal to go forward while dismissing the

primary appeal for lack of statutory finality. Indeed,

petitioner’s cursory discussion of this question cites

no authority whatsoever.

On the merits, petitioner’s position is internally

inconsistent and difficult to follow. Petitioner seems

to argue that the stipulated judgment is “final”

enough for its cross-appeal, but not for Adobe’s

primary appeal. But both parties agreed to end

proceedings in the district court, stipulate to

judgment, and reserve their respective right to appeal

interlocutory orders with which they disagreed.

There is no basis to conclude that Adobe’s consent to

final judgment barred its appeal from the district

court’s prior rulings, but petitioner’s identical consent

did not bar its cross-appeal.

22

Petitioner’s only attempt to explain the

inconsistency is to say that attorneys’ fees are

different because they are “entirely collateral” to the

merits. Pet. 15. But Adobe also appealed an

attorneys’ fees issue that the Federal Circuit chose

not to review. If petitioner’s cross-appeal should have

survived despite the Federal Circuit’s conclusion that

the judgment lacked finality, Adobe’s attorneys’ fees

appeal should have as well.7

CONCLUSION

The petition for a writ of certiorari should be

denied.

Respectfully submitted,

MELISSA ARBUS SHERRY

Counsel of Record

TARA D. ELLIOTT

SAMIR DEGER-SEN

LATHAM & WATKINS LLP

555 Eleventh Street, NW

Suite 1000

Washington, DC 20004

(202) 637-2200

melissa.sherry@lw.com

Counsel for Respondent Adobe Inc.

September 30, 2019

7

If this Court denies review, petitioner will not be left

“without any ability to appeal.” Pet. i. Like Adobe, it will just

have to wait until the district court enters what the Federal

Circuit deems an effective final judgment.