NOTE: This order is nonprecedential. 

## United States Court of Appeals for the Federal Circuit
MISCELLANEOUS DOCKET NO. 892 IN RE ENZO BIOCHEM, INC., ENZO LIFE SCIENCES, INC., and YALE UNIVERSITY, Petitioners. On Writ of Mandamus from the United States District Court for the District of Connecticut in case no. 3:04-CV- 929, Judge Janet Bond Arterton.

------------------------------------ ----------------- --------------------------------- 2008-1058 ENZO BIOCHEM, INC., ENZO LIFE SCIENCES, INC., and YALE UNIVERSITY, Plaintiffs-Appellants,

v. APPLERA CORP. and TROPIX, INC., Defendants-Appellees. Appeal from the United States District C ourt for the District of Connecticut in case no. 3:04-CV-929, Judge Janet Bond Arterton. ON PETITION FOR WRIT OF MANDAMUS Before GAJARSA, LINN, and PROST, Circuit Judges

. PROST, Circuit Judge

. O R D E R Enzo Biochem, Inc. et al. (Enzo) petiti on for a writ of mandamus to direct the United States District Court for the District of Connecticut to enter final judgment. Alternatively, Enzo requests that the court recall the mandate in Enzo Biochem, Inc. v.Applera Corp. , no. 2008-1058, reinstate that appeal, and set a briefing schedule. Applera Corp. et al. (Applera) oppose. Enzo sued Applera for infringement of si x patents. Applera counterclaimed for noninfringement and invalidity of all six patents. On the parties’ stipul ation, the district court dismissed all claims and counterclaims with respect to two of the patents. The district court later entered summary judgment of invalidity with respect to three of the patents. In its ruling, the district court st ated, “Plaintiffs [Enzo et al.] no longer press their claims related to Patent No. 4,711,955 (“ ‘955 Patent”) [the final patent in suit].” The district court did not rule on Applera’s counterclaims directed to the ‘955 patent and directed the clerk to close the case. The clerk closed the case and issued a document entitled “JUDGMENT” on September 10, 2007. Enzo filed a notice of appeal. However, Enzo subsequently filed a motion to volunt arily dismiss the appeal. The motion was granted by the clerk of this court and t he appeal, no. 2008-1058, was dismissed on January 30, 2008. Enzo then filed a motion for entry of fi nal judgment in the district court. On November 24, 2008 the district court denied the motion. The district court reasoned that its September 10, 2007 decisio n was a final judgment. The district court stated that because it found invalid all of the patent claims on which Enzo continued to press its infringement allegations, it was not neces sary to rule on Appl era’s noninfringement counterclaims. With respect to the ‘955 pat ent, the district court stated that Enzo had effectively withdrawn its infr ingement claims and this “obviate[ed] the need for any judicial determination.”

Misc. 892, 2008-1058 2Enzo states that it voluntarily dismissed appeal no. 2008-1058 because it believed that the district c ourt’s September 10, 2007 decisi on was not a final judgment. Enzo states that it has now st ipulated that it will not sue Applera for infringement arising from activities or products with respect to the ‘955 patent occurring on or before May 4, 2008 and argues that this “thereby moot[s] the c ounterclaims directed to this patent.” Applera argues that the district court’s September 10, 2007 decision reflected the district court’s clear intenti on to end the case and, pursuant to this court’s decision in Pandrol USA, LP v. Air boss Railway Prods., Inc. , 320 F.3d 1354, 1362-63 (Fed. Cir. 2003), that is sufficient to render that decision a final judgment. With respect to the ‘955 patent, Applera argues that t he district court “clearly de clared that the ‘955 patent was no longer at issue before entering judgment.” The remedy of mandamus is available only in extraordin ary situations to correct a clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc. , 854 F.2d 461, 464 (Fed. Cir. 1988). A party seeking a writ bear s the burden of prov ing that it has no other means of attaini ng the relief desired, Mallard v. U.S. Dist. Court for the Southern Dist. of Iowa , 490 U.S. 296, 309 (1989), and that the right to issuan ce of the writ is "clear and indisputable," Allied Chemical Corp . v. Daiflon, Inc. , 449 U.S. 33, 35 (1980). “A ‘final decision’ genera lly is one which ends the lit igation on the merits and leaves nothing for the court to do but execute the judgment.” Catlin v. United States , 324 U.S. 229, 233 (1945). “A pending count erclaim precludes jurisdiction absent certification under Rule 54(b)”. See Pause Technology, LLC v. Tivo Inc. , 401 F.3d 1290, 1294 (Fed. Cir. 2005); see also Nystrom v. Trex Co. , 339 F.3d 1347, 1350 (Fed. Cir. 2003) (“If a case is not fully adjudicated as to all claims for all parties and there is no

Misc. 892, 2008-1058 3express determination that there is no just reason for dela y or express direction for entry of judgment as to fewer than al l of the parties or claims, t here is no final decision under 28 U.S.C. § 1295 (a)(1) and therefore no jurisdiction”). In this case, the district court’s S eptember 10, 2007 order did not dispose of Applera’s invalidity coun terclaim concerning the ‘955 pat ent. Although the district court noted that Enzo was no longer pressing its infringement claim concerning that patent, the district court made no ruling concerning invalidity of the ‘955 patent claims. Thus, this case is unlike Pandrol . In Pandrol , the district court ruled that the defendants had waived their counterclaims. See Pandrol , 320 F.3d at 1357 (“ [t]he district court . . . found that the defendants had waived their affirmative defens es and counterclaims by not raising them during briefing or cross-motions for summary j udgment”). In contrast, in this case the district court did not enter an y ruling concerni ng the counterclaim of invalidity of the ‘955 patent. As there has been no express ruling concerning that counterclaim, it remains pending. Because that counterclaim rema ins pending, the court det ermines that Enzo has met its burden of showing a cl ear and indisputable right to is suance of a writ. The court does not decide whethe r Enzo is correct that its stipul ation not to sue Applera concerning the ‘955 patent moots Applera’s counterclaims di rected to that patent. The district court should resolve that issue in the first instance. Accordingly, IT IS ORDERED THAT: (1) The petition for a writ of mandamus is granted to the extent that the district court is directed to reopen the case, enter a ruling on Applera’s counterclaim for invalidity of the ‘955 patent, and, after ruling on that counterclaim, enter final judgment.

Misc. 892, 2008-1058 4Misc. 892, 2008-1058 5 (2) Enzo’s alternative request t hat the court recall the mandate in Enzo Biochem, Inc. v. Applera Corp. , no. 2008-1058, reinstate that appeal, and set a briefing schedule is denied. FOR THE COURT

Feb. 6, 2009 /s/ Jan Horbaly Date Jan Horbaly Clerk cc: L. Gene Spears, Esq. Nicholas Groombridge, Esq. Judge, USDC, D. Conn. Clerk, USDC, D. Conn. s17