UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF NEW YORK 

............................................................... X 

SEAT SACK, INC.. 

MEMORANDUM AND ORDER 

Plaintiff, 

: 07 Civ. 3344 (JLC) 

-v.- 

: (ECF case/---- 

CHILDCRAFT EDUCATION COW. and --I1 

SCHOOL SPECIALTY, INC., 11 f;::!:. 1; 

Defendants. 

JAMES L. COTT, United States Magistrate Judge, 

In and Opinion and Order dated January 22, 2010 (Dock t No. 75), Magistrate f 

Judge Eaton granted summary judgment in favor of defendant Childcraft Education s 

Corp. and School Specialty, Inc. ("Defendants") and entered a fi4al judgment the same 

day directing the Clerk of the Court to close the case (Docket NO. 74).' Plaintiff Seat 

Sack, Inc. ("Plaintiff') filed a notice of appeal on February 11, 201 b (Docket No. 76). 

Plaintiff has now written to the Court by letter dated April 22, 2010 requesting 

that the Court grant a certification under Rule 54(b) of the Federal Rules of Civil 

Procedure nunc pro tunc because, notwithstanding the entry of the judgment as "final," 

there remains a counterclaim seeking a declaration invalidating Plaintiffs design patent 

that was never resol~ed.~ Plaintiff seeks to have its appeal of the decision granting 

summary judgment to Defendants and dismissing its complaint proceed immediately, 

rather than dismiss its appeal without prejudice to renewal upon adjudication of the 

pending counterclaim. 

1 Judge Eaton has since retired from the bench and this case has been reassigned to me. 2 Plaintiff has apparently not sought a stay of the proceedings in the Second Circuit during the 

pendency of this application. 10 James Wm. Moore, et al., Moore's Federal Practice, 5 54.24[2] at 54- 

76 (3d ed. 2009) (court of appeals has discretion to stay appeal to permit appellant to obtain necessary 

certification from district court) (citing cases). 

Uc TC: SDNY 

DAYE SCANNED 

Case 1:07-cv-03344-JLC Document 77 Filed 05/07/10 Page 1 of 6
In a letter dated April 28, 2010, Defendants oppose the request, contending that 

this Court lacks jurisdiction over Plaintiffs request because "this case is not presently 

before the district court and the application is not properly made." Defendants' April 28 

Letter at I. Specifically, Defendants argue that there are two reasons why the judgment 

is not final. First, Defendants contend that the docket reveals that Plaintiff's claims 

against two other defendants - U.S. Office Products Company and U.S. Office Products 

North Atlantic District, Inc. - were dismissed "without prejudice" in 2007 (Docket No. 

40),~ and as such are not "final" for purposes of appellate jurisdiction. Second, 

Defendants note that their counterclaim remains to be adjudicated. Defendants do not 

specifically address the propriety of a nunc pro tunc certification. 

It appears that Magistrate Judge Eaton thought he had resolved the entire case 

when he granted judgment to Defendants. His January 22, 2010 Opinion and Order 

directs the Clerk of the Court to "close [the] case," and the separate judgment he entered 

is denominated a "final judgment." It is true, however, that his opinion never addressed 

the counterclaim, and, as Defendants observe, the Supreme Court has held that "a 

declaratory judgment of invalidity presents a claim independent of the patentee's charge 

of infringement." Cardinal Chem. Co. v. Morton Int'l Inc., 508 U.S. 83, 96 (1993). The 

issue presented is thus whether this Court may issue a Rule 54(b) certificate after a notice 

of appeal has been filed and docketed in the Circuit (as it has in this case, under docket 

no. 10-546-cv). 

Rule 54(b) permits a district court to "direct entry of a final judgment as to one or 

more, but fewer than all, claims or parties only if the court expressly determines that 

I These defendants had filed for bankruptcy in the District of Delaware and plaintiff was required 

under federal law to discontinue its claims against them. To the extent these claims, having been dismissed 

without prejudice, remain an impediment to appellate jurisdiction, the Court now dismisses them 

prejudice. 

Case 1:07-cv-03344-JLC Document 77 Filed 05/07/10 Page 2 of 6
there is no just reason for delay." Therefore, where some claims remain (here, the 

counterclaim), a Rule 54(b) certificate is required to appeal the dismissed claims. See, 

G, In re Chateaugay Corn., 922 F.2d 86, 91 (2d Cir. 1990). 

As courts and commentators have observed, "the lack of certification at the time 

the notice of appeal is filed is not necessarily fatal, because the district court may 

subsequently issue the certificate, thus establishing appellate jurisdiction nunc pro tunc." 

10 James Wm. Moore, et al., Moore's Federal Practice, 5 54.24 at 54-75 (3d ed. 2009) 

(hereinafter, "Moore's"); see Chateaugay, 922 F.2d at 91 ("subsequent entry of a final 

judgment following a remand is sufficient to validate a pretnature notice of appeal if the 

opposing party is not prejudiced by the decision"). The Second Circuit has declined to 

dismiss premature notices of appeal where subsequent actions of the district court "have 

imbued the order appealed from with finality," Leonhard v. United States, 633 F.2d 599, 

61 1 (2d Cir. 1980), cert. denied, 451 U.S. 908 (1981), finding it "appropriate to provide 

the parties with an opportunity to cure the jurisdictional defect." Chateaueav, 922 F.2d at 

91 (citing with approval In re Durability, Inc., 893 F.2d 264, 266 (10th Cir. 1990) 

(though Rule 54(b) certification not obtained prior to appeal, parties permitted time to 

secure certification)). See also Gumer v. Shearson. Hammill & Co., 516 F.2d 283, 285 

(2d Cir. 1974) (declining to dismiss appeal after district court made retroactive Rule 

54(b) certification); cf. Volvo N. Am. Corn. v. Men's Int'l Prof l Tennis Council, 839 

F.2d 69, 71 n.2 (2d Cir. 1988) (post-appeal request for Rule 54(b) certification, while 

"apparently . . . honored" not considered "generally sound practice"). 

Although a district court has considerable discretion to grant a Rule 54(b) 

certificate, see Moore's, 5 54.23[1:l[a] at 54-58, certification is discouraged when claims 

are "inextricably interrelated." Ginett v. Computer Task Grouv. Inc., 962 F.2d 1085, 

Case 1:07-cv-03344-JLC Document 77 Filed 05/07/10 Page 3 of 6
1096 (2d Cir. 1992); see also Ruffolo v. Oppenheimer & Co., 949 F.2d 33, 36 (2d Cir. 

1991) (certification not appropriate where dismissed claims against one defendant 

"completely intertwined" with claims against remaining defendant). Invalidity and patent 

infringement claims, however, are not always so inextricably linked as to preclude final 

judgment on one claim, while the other claim survives. See, e.g., Diamonds.Net LLC v. 

Idex Online, Ltd., 590 F. Supp. 2d 593, 601 (S.D.N.Y. 2008) (exercising declaratory 

judgment jurisdiction over patent invaIidity counterclaim after dismissal of plaintiffs 

infringement claim); Glaxo Wellcome, Inc. v. Eon Labs Mfg., Inc., No. 00 Civ. 9089 

(LMM), 2002 WL 1874830 at *6 (S.D.N.Y. Aug. 13,2002) (granting summary judgment 

in favor of defendant as to invalidity of drug patent and directing clerk to enter "final 

judgment" on that claim under Rule 54(b) while plaintiffs infringement claim remained 

pending). Thus, Defendants' invalidity counterclaim may proceed independent of 

Plaintiffs infringement claims. 

Here, there is "no just reason for delay" in entering a Rule 54(b) judgment nunc 

pro tunc. Taking into account "judicial administrative interests as well as the equities 

involved," Curtiss-Wright Corp. v. General Elec. Co., 446 U.S. 1, 8 (1980), the Court 

finds that Plaintiff has already noticed an appeal, and Defendants have not demonstrated 

they will be prejudiced by a Rule 54(b) certification as they have not taken any action to 

advance their counterclaim since Judge Eaton entered judgment in January, 2010 (nor did 

they cross-move for summary judgment on their counterclaim). Defendants have not 

made persuasive arguments why Plaintiffs appeal should be held up indefinitely while 

the counterclaim is adjudicated in the district court, or even represented that they intend 

to continue to litigate the counterclaim. In addition, Defendants have not established that 

the counterclaim cannot be separately adjudicated without causing piecemeal appeals. 

Case 1:07-cv-03344-JLC Document 77 Filed 05/07/10 Page 4 of 6
For these reasons, the Court certifies nunc pro tunc that the January 22, 2010 

Final Judgment is a "final judgment" pursuant to Rule 54(b). The January 22,2010 Final 

Judgment is therefore modified to include a Rule 54(b) certificate as to Plaintiff's claims. 

The Clerk is directed to enter a separate Rule 54(b) judgment of the ~ourt.%e Clerk is 

also directed to docket Plaintiffs letter dated April 22, 2010 and Defendants' letter dated 

April 28, 20 10 

SO ORDERED. 

Dated: New York, New York 

May 7,20 10 h-7 L - w 

JA S L. COTT 

1 Uni d States Magistrate Judge c/" 

Copies of this Order are being sent by ECF to: 

Edward John Carroll, 111 

Law Office of Edward J. Carroll 

2733 Route 209 

Kingston, NY 12401 

eclaw@hvi.net 

David M. Fine 

Orrick, Herrington & Sutcliffe LLP (NYC) 

51 West 52nd Street 

New York, NY 10019 

dfine@orrick.com 

Richard W. Mark 

Orrick, Herrington & Sutcliffe LLP (NYC) 

5 1 West 52nd Street 

New York, NY 10019 

rmark@orrick.com 

Anthony S. Baish 

780 North Water Street 

Mil, WI 53202-3590 

tbaish@gklaw.com 

4 The Second Circuit has held that a Rule 54(b) judgment must be set out on a separate document 

&, u, Coo~er v. Town of East Ham~ton. 83 F.3d 3 I, 33-35 (2d Cir. 1996). 

5 

Case 1:07-cv-03344-JLC Document 77 Filed 05/07/10 Page 5 of 6
Mark E. Schmidt 

Godfiey & Kahn, S.C. 

780 North Water Street 

Milwaukee, WI 53202-3590 

rnschmidt@gklaw.com 

Nicholas A. Kees 

Godfrey & Kahn, S.C. 

780 North Water Street 

Milwaukee, W153202-3590 

Case 1:07-cv-03344-JLC Document 77 Filed 05/07/10 Page 6 of 6