United States Court of Appeals 

for the Federal Circuit ______________________ 

EPLUS, INC.,

Plaintiff-Appellee,

v.

LAWSON SOFTWARE, INC.,

Defendant-Appellant.

______________________ 

2013-1506, -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: July 25, 2014 

______________________ 

MICHAEL G. STRAPP, Goodwin Procter LLP, of Boston, 

Massachusetts, argued for plaintiff-appellee. With him on 

the brief were JENNIFER A. ALBERT and DAVID M. YOUNG, 

of Washington, DC. 

MARK A. PERRY, Gibson, Dunn & Crutcher, LLP, of 

Washington, DC, argued for defendant-appellant. With 

him on the brief were BLAINE H. EVANSON; and JOSH A.

KREVITT, DANIEL J. THOMASCH, RICHARD W. MARK, of New 

York, New York. Of counsel on the brief were DONALD R.

DUNNER and ERIKA H. ARNER, Finnegan, Henderson, 

Farabow, Garrett & Dunner LLP, of Washington, DC.
2 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

______________________ 

Before, PROST, Chief Judge,

∗

 DYK and O’MALLEY, Circuit 

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 injunction and contempt order. During the pendency of 

Lawson’s appeals, the United States Patent and Trademark 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 cancelled. 

BACKGROUND

This case raises two issues. The first is whether an injunction 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 sourcing. See ePlus v. Lawson, 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 inventory.” ’683 

patent col. 26 l. 61 to 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 

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. 

decide which individual software components to purchase 

based on their needs. As a result, different customers use 

different 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 Procurement”) allowed users to load products into an internal 

database (“Item Master”), search that database for products, create a requisition listing multiple selected products, 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 database. 

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 permanently enjoined Lawson from 

directly or indirectly making, using, offering to 

sell, or selling within the United States or import-
EPLUS, INC. v. LAWSON SOFTWARE, INC. 5

ing into the United States any of the [adjudged infringing] product configurations and/or installation, implementation, design, configuration, 

consulting, upgrade, maintenance and support 

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 Services,” 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 Services.” 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 Configurations 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 

challenged the very provisions of the injunction that led to 

the contempt sanctions sought by ePlus—namely, the bar 
6 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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 patent).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

Lawson also urged that, in light of this court’s narrowing 

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 procurement software, Lawson provides services to customers 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 

26” and “induced its customers to infringe claim 26.” Id.

at 521. 

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 7

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. Additionally, Lawson argued that under eBay Inc. v. MercExchange, 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 injunction. 

The district court agreed with ePlus’s position and ordered 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 injunction, the district court also instituted contempt proceedings. 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 requisition. 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 thirdparty vendors on the same requisition when using Punchout. As a result, users could only build requisitions with 

products from the internal Item Master database or from 

a single third-party database. 
8 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

ePlus alleged that Lawson was in contempt for violating 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 infringe claim 26. The court held Lawson in contempt for 

violating the injunction, finding that the redesigned 

products were no more than colorably different and infringed. 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 Fed App’x 998 (Fed. Cir. 2013) (per curiam). Our 

mandate 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 

Equip. Innovations, Inc., 72 F.3d 872, 881 (Fed. Cir. 

1995)). We review a contempt order based on an injunction against infringement for abuse of discretion. Merial 

Ltd. v. Cipla Ltd., 681 F.3d 1283, 1292 (Fed. Cir. 2012) 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 9

(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 modified 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 approved 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. Pennsylvania 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 enjoyment of the public right inconsistent with law.” Id. at 432.

The Court held that an injunction “is executory, a continuing decree . . . . If, in the mean[]time, since the decree, 

this right has been modified by the competent authority . . . 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.

“The principles of the Wheeling Bridge case have repeatedly been followed” by the Supreme Court as well as

“by lower federal and state courts.” Sys. Fed’n No. 91, Ry. 

Emps’ Dep’t., AFL-CIO v. Wright, 364 U.S. 642, 650–52 

(1961) (holding that it is an abuse of discretion not to 
10 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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 required 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 

omitted 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 (3rd Cir. 1999) (“Wheeling Bridge therefore stands for the proposition that when 

Congress changes the law underlying a judgment awarding 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 

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 previously been granted, a court must consider whether the original finding of wrongdoing continues to justify the court's 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 11

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 injunction 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 injunctions 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 invalidity. 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 criminal contempt even though the order is set aside on appeal . . . 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 US 

307, 319 (1967) (upholding criminal contempt sentences 
12 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

for violation of injunction regardless of the validity of the

injunction); Howat v. State of Kansas, 258 U.S. 181, 189–

90 (1922) (criminal contempt sentences do not depend on 

constitutionality 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 

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, 86 F.2d at 727; S. Anargyros v. 

Anargyros & Co., 191 F. 208 (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 criminal 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 simultaneous proceeding for civil contempt based upon a 

violation of the same order. 

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

Id. at 294–95. The Court explained that if the injunction 

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 

dependent 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 subsequently found to be

invalid. Worden, 121 U.S at 26.6 In Worden, the district 

court had declared the patent 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 contempt. Id. at 20. The 

defendants appealed the court’s rulings on infringement 

and validity, as well as the contempt 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 

6 Curiously, the dissent now finds Worden inapplicable to this situation, Diss. Op. at 11 n.4, 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 Fresenius, stated: “[Worden] merely stands for the proposition 

that the right to fines for violation of a preliminary injunction 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. 

2013) (dissenting from the denial of the petition for rehearing en banc) (citing Worden, 121 U.S. at 25). 

 
14 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

26, it set aside the civil contempt order and resulting 

fines, declaring that the sanctions “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 must be set aside when the injunction 

on which they are based is set aside because the patent is 

determined to be invalid.7 Other circuits have similarly 

held that civil contempt sanctions must be set aside if the 

underlying injunction is reversed on appeal.8 

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 

reasonable excuse disobeyed [its] orders” (internal quotation 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., AFLCIO, 545 F.2d 1336, 1342, 1347–48 (3rd Cir. 1976) (Vacating coercive civil contempt order because “reversal of the

underlying injunction 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. 

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 15

This case is not distinguishable on the ground that 

the injunction has been set aside as the result of the PTO 

proceeding rather than a court judgment. In Fresenius 

USA, Inc. v. Baxter International, Inc., we held that a 

non-final money judgment of damages for 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 precluded 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 

Areas Pen. 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 and 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.”).

9 The Supreme Court denied the petition for certiorari on May 19, 2014. Baxter, Int’l., Inc. v. Fresenius USA, 

Inc., 134 S. Ct. 2295 (2014).

 
16 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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 held in 

Fresenius that even if this court has rejected an invalidity 

defense to infringement, an “intervening decision invalidating the patents unquestionably applies” as long as “the 

judgment in [the present] litigation 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. This 

rule follows from the Supreme Court’s holding that “a 

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 proceedings”); 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

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). 

There is no question here that the district court’s 

modified injunction was not final when the PTO cancelled 

claim 26. Our previous appeal did not affirm the injunction, rather it remanded the case to the district court, 

requiring it “to consider what changes are required to the 

terms of the injunction, consistent with this opinion.” 

ePlus I, 700 F.3d at 512. Our decision necessitated changes to the injunction because of our reversal of the infringement findings under claims 28 and 29, and our 

conclusion that Configuration 2 was not infringing. On

remand, the district court had to consider the scope of 

relief to which ePlus was entitled, which necessarily 

impacted what activities Lawson could undertake. The 

district court ordered the parties to file statements of 

position “respecting the effect, if any, of the decision of the 

Court of Appeals on the scope of the injunction previously 

entered.” ePlus, Inc. v. Lawson Software, Inc., No. 3:09-cv620, Order, (E.D.Va. Nov. 28, 2012), ECF No. 981. In light 

of those submissions, the court recognized that “it is 

appropriate to reassess the propriety and scope of an 

injunction, as directed by the United States Court of 

Appeals for the Federal Circuit.” ePlus, Inc. v. Lawson 

Software, Inc., No. 3:09-cv-620, Order 2, (E.D.Va. Mar. 12, 

2013), ECF No. 1019. 

On the remand (as on appeal), Lawson argued that 

our ruling required more than eliminating the reference 

to Configuration 2. Specifically, Lawson contended that it 

was necessary to alter the injunction as to sales of products. Lawson also asserted that the requisite eBay analysis for the injunction changed because Configurations 3 

and 5 were used by a substantially smaller portion of its 

customer base than Configuration 2. The district court 

rejected Lawson’s arguments and found that the only 
18 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

change our mandate required was removing the provision 

of the injunction that referenced Configuration 2. Consequently, it issued an order modifying the injunction in 

this one respect. The court ordered that “[p]ursuant to the 

mandate of the United States Court of Appeals for the 

Federal Circuit . . . it is hereby ORDERED that the injunction . . . is modified by deleting from its scope the 

product . . . colloquially known as ‘Configuration 2[.]” J.A. 

1. Lawson appealed the modification on the ground that it 

was not sufficient or consistent with our mandate and did 

not make the required changes. Under these circumstances, as in Fresenius, the district court’s order was not final. 

721 F.3d at 1342–43. After the district court modified the 

injunction, Lawson appealed the modification under 28 

U.S.C. § 1291(a)(1). That appeal was pending when the 

PTO cancelled the only claim at issue in the litigation. 

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 injunction. The filing of a Rule 60(b) motion under such circumstances 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. I.N.S., 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 violation 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.
EPLUS, INC. v. LAWSON SOFTWARE, INC. 19

CONCLUSION

For the foregoing reasons, the district court’s injunction and contempt orders are vacated. The case is remanded 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, -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 cancellation of claim 26 of the ’683 patent, an ongoing injunction 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 Appellees 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 15-16, 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.” Maj. Op. 

at 15. Because it finds the judgment in this case nonfinal, 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). 

I 

In Fresenius II, a panel of this court held that “cancellation of claims during reexamination would be binding in 

concurrent litigation,” and, while “cancellation of a pa1 While Lawson contends it did not violate the district 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

tent’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 facts here are different 

than those before us in Fresenius II. 

In the initial district court litigation between Fresenius and Baxter, Fresenius brought suit seeking a declaratory judgment that the claims of three patents were 

“invalid and not infringed by Fresenius’s hemodialysis 

machines.” Fresenius USA, Inc. v. Baxter Int’l., Inc., 582 

F.3d 1288, 1293 (Fed. Cir. 2009) (“Fresenius I”). 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 

Fresenius 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 

construction. 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 instruction: “[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 
4 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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 preverdict damages for infringement of the ’434 patent.” 

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 preverdict 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 vacated 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 

the “scope of relief remain[ed] to be determined,” there 

was “no final judgment binding the parties,” the reexamination “extinguishe[d] the underlying basis for suits 

based on the patent,” and we vacated the pre-verdict 

damages award. Id. at 1341, 1344. 

The facts of the present appeal differ markedly from 

those presented in Fresenius II. At trial in this case, the 

jury found that Configurations 1 and 4 were not infringing; Configurations 2, 3, and 5 infringed system claim 1 of 

the ’172 patent; Configurations 3 and 5 infringed system 

claim 3 of the ’683 patent and method claims 26, 28, and 

29 of the ’683 patent; and Lawson did not infringe the ’516 

patent. ePlus, Inc. v. Lawson Software, Inc., No. 3:09-cv620, 2011 WL 2119410, at *4 (E.D. Va. May 23, 2011). 

The jury also concluded that none of the asserted claims 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 5

were invalid. Id. The district court entered a permanent 

injunction against Lawson, preventing Lawson from 

making, using, selling, or offering to sell, Configurations 

2, 3, or 5. Id. at *19.2 ePlus then initiated contempt 

proceedings against Lawson, arguing that the designaround RQC module was not more than colorably different from the infringing RSS module. ePlus, Inc. v. Lawson Software, Inc., 946 F. Supp. 2d. 472, 475-76 (E.D. Va. 

2013).

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. 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. We affirmed, however, the jury’s finding of infringement of claim 26 of the ’683 patent.3 We returned 

2 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, Inc. v. Lawson Software, Inc., 700 F.3d 509, 515 (Fed. Cir. 2012) (“ePlus I”). 

Thus, ePlus’s only available remedy was an injunction. 

3 The majority claims that, in ePlus I, we upheld 

the finding of induced infringement of claim 26 based 

solely on “Lawson providing customer services,” and not 

due to sales. Maj. Op. at 6. That is not accurate, as the 

language the majority omits from the same paragraph of 

ePlus I proves. Maj. Op. at 6 n.4. In ePlus I, we held that 

“there remains no serious dispute that Lawson’s customers infringe claim 26.” 700 F.3d at 520. After finding that 

Lawson directly infringed through its customer services, 

 
6 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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. Our remand instruction merely recognized 

the district court’s inherent continuing equitable powers 

over the scope of its injunction. Importantly, neither our 

opinion nor our remand instruction vacated the injunction. 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.

On remand, Lawson moved to modify or vacate the 

injunction under Federal Rule of Civil Procedure 60(b). 

The district court concluded that “the injunction must be 

modified so as to no longer apply to Configuration No. 2. 

The injunction shall remain in effect in all other respects.” 

ePlus, Inc. v. Lawson Software, Inc., 946 F. Supp. 2d 459, 

471 (E.D. Va. 2013) (also holding that aspects of the 

injunction related to Configuration Nos. 2 and 5 “remain 

undisturbed by the Federal Circuit decision”). Thus, the 

only modification necessary under our remand instruction

“consistent with [our] opinion” was that Configuration 2 

had to be removed from the scope of the injunction as

claim 1 of the ’172 patent, the sole basis for infringement 

we held 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 also affirmed the district 

court’s finding that there was sufficient evidence that 

Lawson was a contributory infringer. Id. at 523 n.2. We 

thus affirmed that Lawson induced infringement, in part,

through “selling and offering to sell the infringing systems,” without limiting our analysis to just the system 

claims. See ePlus, 2011 WL 3584313, at *4. 

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 7

by Configuration 2, was held invalid. Id. Lawson never 

contended that the number of claims of the ’683 patent 

that were infringed would or should impact the scope of 

the products enjoined, or even that the number of patents 

infringed by the same products was material to the nature of the injunctive relief. Id. at 466-70 (noting that 

Lawson sought to alter the scope of the injunction only on 

the basis that just method claims remained infringed 

after ePlus I, and “only 150 Lawson customers would be 

affected by the injunction”). Thus, while reference to 

Configuration 2 was removed from the injunction, the 

activities enjoined did not change. Id. at 471. Separately, 

the district court concluded that Lawson had been in 

contempt of the injunction since soon after it was entered,

and awarded ePlus disgorgement of Lawson’s profits. 

ePlus, Inc. v. Lawson Software, Inc., 946 F. Supp. 2d 472, 

489-93 (E.D. Va. 2013). Lawson appealed the district 

court’s contempt order and ruling on the Rule 60(b) motion. 

 There are crucial differences between these facts and 

the facts in Fresenius II. First, Fresenius failed to appeal 

the pre-verdict damages judgment from the district court, 

but did appeal the validity of all relevant claims-at-issue. 

As the PTO’s reexamination determination involved the 

validity of some of the claims-at-issue, Fresenius at least 

continued to press the validity of the patents in its first 

appeal. Further, while Fresenius did not directly appeal 

the pre-verdict damages award in Fresenius I, it did move 

for a new trial on damages on remand premised on the 

“further proceedings” language in our remand instruction, 

which it then appealed in Fresenius II. 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. The judgment 

that claim 26 of the ’683 patent was valid became final 

when the district court entered final judgment and Lawson chose not to appeal that judgment to this court. 
8 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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 reexamination 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 “forecloses 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 jurisdiction is retained for 

some purposes may nonetheless be final as to other issues 

determined.”). 

 Second, the remand instructions in ePlus I and Fresenius I were different in important, material respects. In 

Fresenius I, we vacated the injunction and the postverdict royalty awards, instructed the district court to 

“revise or reconsider” the injunction, and remanded “for 

further proceedings consistent with this opinion.” Fresenius I, 582 F.3d at 1304. By vacating the injunction, we 

required the district court to analyze the injunction anew. 

Further, in Fresenius II we found that, by remanding “for 

further proceedings consistent with this opinion,” the 

district court was free to consider other aspects of the 

case, including Fresenius’s motion for a new trial regarding pre-verdict damages. Here, we did not vacate the 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 9

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 proceedings.” 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, as the Fresenius II majority contemplated

when attempting to distinguish the United States Court 

of Appeals for the District of Columbia’s (“D.C. Circuit”) 

apparently contrary ruling in Qualcomm, the more limited scope of the remand order from ePlus I differentiates 

the present appeal from that in Fresenius II. 

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 damages would be vacated in light of the PTO reexamination 
10 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

results because the scope of monetary remedies was not 

yet final. 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 

since 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 “continuing 

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 occurred while the injunction, with regards to Configurations 3 and 5, was valid under ePlus I. While 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 infringement 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 underlying basis for an injunction unless the court issuing the 

injunction had no jurisdiction to do so.4 Maggio v. Zeitz, 

4 The cases the majority relied upon, such as 

McLean v. Central States, S. & S. 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 of America, AFL-CIO, 545 

F.2d 1336 (3d Cir. 1976); all involved both the underlying 

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 11

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 injunction was that the [newly accused product] did not infringe. 

. . . Validity and infringement by the original device were 

not open to challenge.’” (quoting Additive Controls & 

injunction and the contempt order simultaneously on 

direct appeal. 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. While a district court retains the 

equitable power to revise an injunction prospectively, we 

did not vacate the injunction, and the injunction was final 

at the time of the allegedly contemptible conduct. 

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 preliminary injunction is founded on that injunction which in 

turn is predicated on the validity of the patent.” Fresenius II, 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, rendering 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. 

 
12 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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. 

For these reasons, I believe that the majority incorrectly holds that Fresenius II requires that we to vacate

the compensatory contempt award in light of In re ePlus.5 

II

 If the majority is correct that Fresenius II requires us 

to vacate the compensatory contempt award, 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 proceedings, 

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, Fresenius II, 733 F.3d 

at 1373-81 (O’Malley, J., dissenting from denial of petition 

for rehearing 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. 

5 As noted, given the grounds for our decision here, 

I express no opinion on the merits of Lawson’s objections 

to the contempt findings.

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 13

The majority’s approach to finality will further displace the critical role of district courts in patent infringement 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 materially different circumstances, the majority assumes that 

any determination made during an infringement case, 

even if that specific issue is never appealed, can be nullified 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 approach essentially allows an executive agency action to 

render both the panel opinion in ePlus I and the district 

court’s judgment regarding validity advisory opinions. 

That result ignores the role of Article III courts in our 

constitutional structure. See Hayburn’s Case, 2 U.S. (2 

Dall.) 409, 411 (1792) (Chief Justice Jay and Justice 

Cushing writing, 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 federal courts); Qualcomm, 181 F.3d at 1379-

80 (discussing 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 activity under the separation of powers doctrine). 

 The majority’s approach is contrary to the wellestablished law of finality when the merits of an issue are 

conclusively decided. Fresenius II, 733 F.3d at 1375-77 

(O’Malley, J., dissenting from denial of petition for rehearing en banc). And, that decision further deepens the 

circuit split between our court’s approach to finality and 
14 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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). While it is true that a district court, 

in its equitable powers, retains the ability to alter the 

scope of an injunction prospectively, the district court 

here lacked the power to vacate the merits underlying our 

finding of infringement 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 determination 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 Fresenius 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 16. Even if we had affirmed 

all grounds in ePlus I and did not remand, Lawson could

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?6 

6 Indeed, parties have begun reading Fresenius II

broadly, arguing that the policies and rationales underlying that decision justify reopening even admittedly final 

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 15

The majority decision today exacerbates the circuit 

split between the Federal Circuit and the 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 determinations 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 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 rehearing en banc in Fresenius II, 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 Manufacturing Corp., 719 

F.3d 1305 (Fed. Cir. 2013) (en banc), this court held, en 

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 invalidity), 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). 

 
16 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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 that damages and willfulness determinations are 

sufficiently “ministerial” to constitute no more than an 

“accounting” 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); 

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), abrogated on other 

grounds, Mikels v. City of Durham, N.C., 183 F.3d 323 

(4th Cir. 1999) (“Finality for purposes of collateral estoppel is a flexible concept. . . . ”); 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 involved 

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.
EPLUS, INC. v. LAWSON SOFTWARE, INC. 17

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.