United States Court of Appeals 

for the Federal Circuit ______________________ 

EPLUS, INC.,

Plaintiff-Appellee

v.

LAWSON SOFTWARE, INC.,

Defendant-Appellant

______________________ 

2013-1506, 2013-1587

______________________ 

Appeals from the United States District Court for the 

Eastern District of Virginia in No. 09-CV-0620, Senior 

Judge Robert E. Payne.

______________________ 

Decided: June 18, 2015

______________________ 

MICHAEL GAVIN STRAPP, Goodwin Procter LLP, Boston, MA, argued for plaintiff-appellee. Also represented 

by JENNIFER A. ALBERT, DAVID M. YOUNG, Washington, 

DC.

MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP, 

Washington, DC, argued for defendant-appellant. Also 

represented by BLAINE H. EVANSON, Los Angeles, CA; 

JOSH KREVITT, DANIEL J. THOMASCH, RICHARD MARK, New 

York, NY; ERIKA ARNER, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, Reston, VA; DONALD ROBERT 

DUNNER, 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, Inc. v. Lawson Software, Inc., 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–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 decide 

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. 

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 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 5

directly or indirectly making, using, offering to 

sell, or selling within the United States or importing 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 
6 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

challenged the very provisions of the injunction that led to 

the contempt sanctions sought by ePlus—namely, the bar 

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

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 

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

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

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 third26” and “induced its customers to infringe claim 26.” Id.

at 521. 

 
8 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

party 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. 

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 F. 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 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 9

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) 

(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.
10 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

“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 v. Wright, 364 U.S. 642, 650–52 (1961) 

(holding that it is an abuse of discretion not to 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 (3d 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 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 11

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 

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

nal 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 U.S. 

307, 319 (1967) (upholding criminal contempt sentences 

for violation of injunction regardless of the validity of the

injunction); Howat v. 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 

for violating a provision of an injunction that is not final, 

i.e., that is still subject to litigation over the propriety of 

its issuance, 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 Corp. v. Acme 

Tank Cleaning Process Corp., 86 F.2d 727, 727 (2d Cir. 

1936); S. Anargyros v. Anargyros & Co., 191 F. 208 

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

(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. 

Id. at 294–95. The Court explained that if the non-final 

injunction at issue (a temporary restraining order) 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 found to be invalid on 

appeal of the (non-final) injunction. Worden, 121 U.S at 

26.6 In Worden, the district court had declared the patent 

6 Curiously, the dissent now finds Worden inapplicable to this situation, Diss. Op. at 14 n.5, 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. 

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

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 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 for violating a 

provision of an injunction that is still subject to litigation 

over its issuance must be set aside when the injunction is 

reversed because the patent is determined to be invalid.7

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

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

Other circuits have similarly held that civil contempt 

sanctions must be set aside if the underlying non-final 

injunction is reversed on appeal.8 

This case is not distinguishable on the ground that 

the basis for the injunction has been removed 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 

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., 545 F.2d 

1336, 1342, 1347–48 (3d 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. Areas Pension

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 & 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”).

All of these cases involved orders whose merits were still 

subject to review when the civil contempt sanctions were 

reviewed. 

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

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 

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 go no 

further than we did in Fresenius in deciding this case.

We held in Fresenius that even if this court has rejected an invalidity defense to infringement, an “interven9 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).

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

ing 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. We relied on the Supreme Court’s holding that “a 

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). 

At the time of the original injunction here, the jury 

had found two system claims and three method claims 

infringed. The injunction did not tie specific enjoined 

activities or products to specific claims that had been 

found infringed. Indeed, it did not even mention any of 

the five claims that were found to be infringed. On its 

face, our invalidation of the two system claims and our 

holding that method claims 28 and 29 were not infringed, 

see ePlus I, 700 F.3d at 520–22, resulted in a substantial 

question as to the appropriate scope of the injunction. The 

question was whether the one method claim we sustained 
18 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

(claim 26) was sufficient to support the district court’s 

broad injunction. We remanded for the district court to 

“consider what changes are required to the terms of the 

injunction, consistent with this opinion.” Id. at 523. 

Although the parties agreed that configuration 2, which 

the jury had found infringed one system claim, was to be 

removed from the injunction, a central issue on remand 

was whether the injunction as to sales and manufacturing 

could still be upheld on the basis of infringement of method claim 26.

The injunction enjoined “making, . . . offering to sell, 

or selling” the “Infringing [software] Products . . . .” J.A. 

4263–64. But it did not tie the sales provision to any 

particular claims, nor, contrary to the dissent, did the 

district court’s opinions do so.11 There was no question as 

11 The dissent quotes from the district court’s opinion denying judgment as a matter of law to argue that 

selling the infringing systems would be an infringement of 

method claim 26 specifically. Diss. Op. at 4 n.2 (quoting

ePlus, Inc. v. Lawson Software, Inc., 2011 WL 3584313, at 

*4 (E.D. Va. Aug. 12, 2011)). The context of the quoted 

sentence shows instead that the district court was referring to the infringed claims collectively: 

The jury heard and received substantial evidence 

to support a finding of indirect infringement of the 

claims, on either an inducement or contributory 

infringement basis. Evidence demonstrated 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. Testimony elicited during the trial and 

the documentary evidence tended to prove also 

that Lawson installs the infringing systems on its 

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 19

to the propriety of the sales and manufacturing injunction 

so long as the system claims were infringed. An injunction 

can of course be granted against the making and selling of 

a product that directly infringes on a system claim. See, 

e.g., NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 

1315 (Fed. Cir. 2005) (noting that using, offering to sell or 

selling a patented system can be direct infringement of a 

system claim under 35 U.S.C. § 271(a)); Broadcom Corp. 

v. Emulex Corp., 732 F.3d 1325, 1338 (Fed. Cir. 2013) 

(sustaining injunction against sales where a system claim 

was infringed). 

But the system claims were held invalid. ePlus has 

argued that the sales and manufacturing provisions of the 

injunction could be based on induced infringement by 

Lawson of method claim 26, the one claim of the patent 

that we held infringed in the original appeal. On remand, 

and again on appeal here, Lawson argued that the injunction had to be modified because it could not, after the 

customers’ systems, configures and implements 

the systems, provides a wide-range of technical 

support and service, and provides instructions and 

training to its customers on how to use the systems in an infringing manner.

ePlus, 2011 WL 3584313, at *4. This passage, like the 

district court’s injunction opinion, see ePlus, Inc. v. Lawson Software, Inc., 2011 WL 2119410 (E.D. Va. May 23, 

2011), is not clear on the precise scope of Lawson’s indirect infringing activity with respect to each individual 

claim. Given that only method claim 26 survived the 

ePlus I appeal, with the system claims held invalid and 

other method claims found non-infringed, there was a 

substantial question as to which activities—Lawson’s 

selling, installing, supporting, servicing, or training—

could still be enjoined.

 
20 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

invalidation of the two system claims, “prohibit[] Lawson 

from making and selling its . . . systems” because the 

original injunction barred sales “even though Lawson’s 

mere sale and distribution of its systems does not infringe 

the method of [c]laim 26.” Lawson’s Statement of Position 

Respecting the Effect of the Federal Circuit’s Decision on 

the Scope of the Original Injunction at 17–18, No. 

3:09cv620 (E.D. Va. Dec. 27, 2012), ECF No. 990 (emphases in original). We agree with Lawson that the original 

appeal did not resolve the question of whether claim 26 

could support the sales injunction.

Once the system claims were invalidated, there remained a substantial question of whether an injunction 

against sales and manufacturing could be justified on a 

theory of inducement.12 The core functionality of Lawson’s 

systems (which ePlus itself characterizes as the “core” 

functionality) allowed a purchaser to search an internal 

database and order items. But that functionality did not 

12 The dissent suggests we affirmed a determination 

of contributory infringement of the method claims. Diss. 

Op. at 6–7. In fact, the panel opinion in ePlus I did not 

address contributory infringement. This is unsurprising, 

since contributory infringement of the method claims was 

barely mentioned in the parties’ briefs in that appeal. 

Significantly, the panel did not even mention contributory 

infringement when it described ePlus’ theories of infringement of the method claims. See ePlus I, 700 F.3d at 

514 (“As to the method claims, ePlus alleged that (1) 

Lawson induces its customers to use software programs to 

perform all of the steps of the asserted method claims; (2) 

Lawson itself infringes the method claims by demonstrating, installing, managing, and maintaining its software 

products for its customers; and (3) Lawson, its customers, 

and third party vendors jointly infringed the asserted 

method claims.”).

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 21

infringe claim 26. Only using the so-called “Punchout” 

feature that allowed customers to also order from thirdparty databases was held to be infringing.

As the Supreme Court explained in the analogous 

context of copyright infringement, to “overcome[] the law’s 

reluctance to find liability when a defendant merely sells 

a commercial product suitable for some lawful use,” 

induced infringement requires active steps to encourage 

direct infringement and an “affirmative intent that the 

product be used to infringe.” Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005) (citing 

Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed. 

Cir. 1988)). A seller does not induce infringement of a 

method claim by merely selling an apparatus capable of 

performing the method. See Dynacore Holdings Corp. v. 

U.S. Philips Corp., 363 F.3d 1263, 1276 n.6 (Fed. Cir. 

2004) (“[S]ale of a lawful product by lawful means, with 

the knowledge that an unaffiliated, third party may 

infringe, cannot, in and of itself, constitute inducement of 

infringement.” (citation, internal quotation marks omitted)); Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. 

Cir. 1993) (“The law is unequivocal that the sale of 

equipment to perform a process is not a sale of the process 

within the meaning of section 271(a).”). Inducement 

requires such steps as “encourag[ing],” Grokster, 545 U.S. 

at 936, “recommend[ing],” Toshiba Corp. v. Imation Corp., 

681 F.3d 1358, 1365 (Fed. Cir. 2012), or “promot[ing],” 

Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 

F.3d 1354, 1365 (Fed. Cir. 2004), an infringing use. Further, the Fifth Circuit explicitly held in Rohm & Haas Co. 

v. Dawson Chemical Co., 599 F.2d 685 (5th Cir. 1979), 

aff’d, 448 U.S. 176 (1980), “mere sale is not wrongful 

under [271(b)]” where a method claim had been infringed, 

so appropriate relief would “not be an injunction forbidding [sales].” Id. at 703 n.24.

Not surprisingly, our opinion in ePlus I did not resolve 
22 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

whether the sales and manufacturing injunction could be 

based on method claim 26. With respect to claim 26, we 

stated that Lawson’s customers infringe by performing all 

the steps of claim 26, that Lawson directly infringes claim 

26, and that Lawson induced infringement. But we did 

not hold that sales induced infringement.13 There was no 

argument by either party in the original appeal as to the 

consequences of invalidating the system claims, so this 

13 The entirety of our discussion is as follows:

Moreover, in our view, the record contains substantial evidence to show that Lawson itself infringes claim 26. In particular, there is evidence 

that Lawson installed, maintained, demonstrated, and managed the infringing systems for its 

customers. The evidence includes course catalogs 

and webinar presentations offered by Lawson to 

its customers. ePlus also offered testimony at trial 

to the effect that Lawson’s professional services 

include developing, installing, and testing “up to 

and including bringing a system live” for its customers. J.A. 1941. ePlus also provided the jury 

with evidence that the live testing phase included 

performing actual procurements using Lawson’s 

systems. All of this circumstantial evidence permits a reasonable jury to infer that Lawson performed the steps of claim 26. Finally, 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. Thus, we affirm the district court’s denial of JMOL of non-infringement with respect to 

the jury’s verdict of direct and induced infringement of claim 26.

ePlus I, 700 F.3d at 520–21.

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 23

court’s statement that “[t]o the extent that we have not 

addressed any of the parties’ arguments . . ., we have 

determined them to be unpersuasive,” ePlus I, 700 F.3d at 

523 n.2, cannot have been directed to that issue.

Thus, because the propriety of the injunction against 

sales and manufacturing was still an issue after the first 

appeal, there had not been “a final decree . . . that finally 

adjudicates upon the entire merits, leaving nothing 

further to be done except the execution of it.” John Simmons Co., 258 U.S. at 88. And the “scope of relief remain[ed] to be determined . . . .” Fresenius, 721 F.3d at 

1341. The injunction was not final and under Worden, the 

cancellation of the claim by the PTO required that the 

injunction and contempt sanctions be vacated.

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. Immigration & Naturalization Serv., 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.
24 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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, 2013-1587

______________________ 

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 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.” Id. 

Because it finds the judgment in this case non-final, 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)

(“Fresenius II Denial of En Banc”). If Fresenius II compels the conclusion here, it should be reconsidered.

I 

I begin by addressing the majority’s revisions to the 

originally-issued opinion in this case, made in response to 

1 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

legitimate criticisms of the panel opinion set forth in the 

Petition for Panel Rehearing and Rehearing En Banc. 

Rather than correct the legal errors in its original decision, the majority now attempts to justify that decision by 

rewriting the record and recharacterizing our decision in 

ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509 (Fed. 

Cir. 2012) (“ePlus I”). The majority newly claims that 

“[w]e go no further than we did in Fresenius in deciding 

this case.” Maj. Op. at 16. It tries to vindicate its expansive view of finality by asserting that the landscape it 

initially addressed in this case was something other than 

first described—and something other than it was. Although the majority tries hard to conjure a record upon 

which it can claim that the injunction at issue in this case 

was not final when the panel opinion was written, the 

majority does not succeed. The record nevertheless shows 

that the majority has stretched the already concerning 

scope of Fresenius II to an even more untenable place. 

Maj. Op. at 17–23. 

A 

In ePlus I, we faced an appeal from a district court 

judgment which found system claim 3 and method claims 

26, 28, and 29 of U.S. Patent No. 6,023,683 (“the ’683 

patent”), as well as system claim 1 of U.S. Patent No. 

6,505,172 (“the ’172 patent”), valid and infringed. ePlus, 

Inc. v. Lawson Software, Inc., No. 3:09-cv-620, 2011 WL 

3584313, at *3–4 (E.D. Va. Aug. 12, 2011). Predicated on 

that judgment, the district court enjoined all activities 

that would constitute continuing infringement of those 

claims, including sales of all infringing configurations—

designated Configuration Nos. 2, 3, and 5, as well as the 

M3 e-Procurement System. See ePlus Inc. v. Lawson 

Software, Inc., 946 F. Supp. 2d 459, 471 (E.D. Va. 2013). 

The court specifically found that sales of Configuration 2 

infringed claim 1 of the ’172 patent, and sales of the other 

three configurations infringed both system claims and all 

three method claims. ePlus, Inc. v. Lawson Software, Inc., 
4 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

No. 3:09-cv-620, 2011 WL 2119410, at *4 (E.D. Va. May 

23, 2011) (noting that: (1) the jury found that Configurations 3 and 5 infringed inter alia claim 26 of the ’683 

patent but Configuration 2 only infringed claim 1 of the 

’172 patent, and (2) the court found that the M3 eProcurement system infringed on the basis of a pre-trial 

stipulation). Importantly, with respect to the relevant 

system and method claims, including claim 26, the district court found that “[e]vidence demonstrated 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.”2 ePlus, 2011 WL 3584313, at *4 

(emphasis added). The court determined that Lawson 

also induced infringement by installing and configuring 

the infringing systems as well as by providing technical 

support and training. Id. Lawson’s customers therefore 

directly infringed each of the challenged method claims of 

2 Lawson challenged “the jury’s verdict with respect 

to indirect infringement,” claiming that the verdict “was 

supported by insufficient evidence.” ePlus, 2011 WL 

3584313, at *4. The district court disagreed. As quoted 

by the majority, Maj. Op. at 22 n.13, the court concluded 

that for each of the five claims at issue, there was sufficient evidence to uphold the jury’s finding of induced 

infringement on the basis of Lawson’s “selling and offering to sell the infringing system.” ePlus, 2011 WL 

3584313, at *4. The district court’s collective treatment of 

all five claims, and its determination that substantial 

evidence of Lawson’s sales supported the jury’s finding of 

induced infringement for each of the five claims, does not 

mean there remains a “substantial question as to which 

activities . . . could still be enjoined.” Maj. Op. at 22 n.13. 

It is, indeed, notable that the parties did not question 

what activities would be enjoined if any of the verdicts 

were affirmed. 

 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 5

the ’683 patent, including claim 26, by their use of the 

“accused systems,” and Lawson induced that specific form 

of direct infringement by “selling and offering to sell the 

infringing systems.” Id. There is no doubt that the 

injunction entered by the district court was predicated, 

among other findings, on an express finding of infringement of method claim 26 due to Lawson’s sales of the 

infringing configurations to its customers.3 In response to

Lawson’s purported continuing infringing activities in 

light of the injunction, ePlus initiated contempt proceedings against Lawson, arguing that the design-around 

RQC module was not more than colorably different from 

the infringing RSS module. ePlus, 946 F. Supp. 2d at

475–76. 

In ePlus I, 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. Further, although it did 

appeal the infringement determinations as to claims 26, 

28, and 29, it did not assert that the number of claims 

infringed by Lawson’s systems impacted the validity or 

scope of the injunction. Lawson never contended that it 

was somehow less appropriate to enjoin infringement of 

one valid claim than it would be to enjoin infringement of 

any other claim. Importantly, Lawson argued that the 

injunction was too broad because it enjoined not just the 

sale of the infringing products, but also servicing and 

maintenance of products sold prior to the injunction. Id.

3 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 I, 700 F.3d at 515. 

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

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

at 522. But that was the only appellate attack Lawson 

made regarding the injunction.

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. With 

respect to infringement of claim 26, however, we held that 

“there remains no serious dispute that Lawson’s customers infringe claim 26.” Id. at 520. We then stated 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 were also unpersuaded by Lawson’s argument 

that there was insufficient evidence that Lawson was a 

contributory infringer.4 Id. at 523 n.2. We thus affirmed 

4 We stated in ePlus I that “[t]o the extent that we 

have not addressed any of the parties’ arguments . . . , we 

have determined them to be unpersuasive.” 700 F.3d at 

523 n.2. The district court concluded that Lawson contributorially infringed, ePlus, 2011 WL 3584313, at *4 

(“The jury heard and received substantial evidence to 

support a finding of indirect infringement of the claims, 

on either an inducement or contributory infringement 

basis.” (emphasis added)), and the injunction barred 

Lawson from “directly or indirectly” making, using, offering to sell, selling, or importing the accused Configurations. Joint Appendix (“JA”) 1–4. Lawson argued in its 

merits brief on appeal that, to the extent ePlus relied on a 

contributory infringement theory to prove infringement of 

the method claims, ePlus failed to prove contributory 

infringement. Accordingly, because we did not address 

contributory infringement in ePlus I, we found Lawson’s 

arguments regarding contributory infringement “unper-

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

that Lawson induced infringement and engaged in contributory infringement through “selling and offering to 

sell the infringing systems,” and we did so without hesitation. See ePlus, 2011 WL 3584313, at *4. After this 

determination, we reversed the infringement findings as 

to claims 28 and 29, but never questioned the continuing 

validity of the injunction as to the sales found to infringe 

claim 26. Indeed, we examined and affirmed both the fact 

and scope of the injunction after our rulings on claims 28 

and 29. Id. at 522. We never implied (and Lawson never 

questioned) whether the propriety of the injunction varied 

according to the number of claims infringed. Id. (“Here, 

however, it just so happens that because of the district 

court’s enforcement of the discovery rules, ePlus was not 

permitted to present any evidence of damages. That does 

not mean that Lawson was authorized to sell products 

that infringe ePlus’s patent.”). We therefore affirmed the 

infringement finding as to claim 26, retained the injunction barring sales of all configurations that infringed 

claim 26, and returned 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. at 523. We did not, as 

the majority now claims, “overturn[ ]” the injunction. 

Maj. Op. at 3. 

Indeed, at the point at which we remanded to the district court, it is hard to conceive how “the propriety of the 

injunction against sales and manufacturing was still an 

issue . . . .” Maj. Op. at 23. We had affirmed that substantial evidence supported the district court’s conclusion 

that Lawson induced infringement of claim 26 through 

sales of certain accused configurations. We did not vacate 

suasive,” and did not disturb the district court’s contributory infringement determinations concerning claim 26. 

 
8 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

the district court’s injunction, request that the district 

court “revise or reconsider the injunction,” as we did in 

Fresenius USA, Inc. v. Baxter International, Inc., 582 F.3d 

1288, 1293 (Fed. Cir. 2009) (“Fresenius I”), or even alter the 

scope of the injunction in light of Lawson’s direct challenge. We merely remanded for the district court to 

consider whether and if “changes are required” in light of 

the district court’s inherent continuing equitable powers 

to prospectively adjust an injunction due to our invalidation of claim 1 of the ’172 patent. 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.

It is therefore unsurprising that the district court, on 

remand, found that we “affirmed the judgment of direct 

and indirect infringement of [c]laim 26, rejected Lawson's 

challenge to the breadth of the injunction, and held that 

‘[t]o the extent that we have not addressed any of the 

parties' arguments on appeal or cross-appeal, we have 

determined them to be unpersuasive,’” thus concluding 

that “it is rather clear that the Court of Appeals affirmed 

the decision to issue the injunction.” ePlus, 946 F. Supp. 

2d at 463 (quoting ePlus I, 700 F.3d at 523 n.2). The only 

modification necessary under our remand instruction

“consistent with [our] opinion” involved removing Configuration 2 from the scope of the injunction because claim 1 

of the ’172 patent, the sole basis for infringement by 

Configuration 2, was held invalid. Id. at 471. But the 

district court did not vacate the injunction as to the other 

configurations prospectively, and, in fact, found that all 

four of the eBay factors supported prospectively continuing the injunction. Id. at 467–70. The district court 

further held that it could not reconsider the injunction 

retrospectively on the basis of the mandate rule. Id. at 

463. Although the majority now states that the “propriety 

of the injunction . . . was still at issue” after ePlus I, Maj. 

Op. at 23, there is no language in ePlus I that supports 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 9

that revisionist view of what we did; the district court 

correctly concluded that our mandate in ePlus I foreclosed 

any challenges to retrospective aspects of the injunction. 

The district court’s analysis of the continuing prospective 

validity of the injunction under its inherent equitable 

power says nothing about the finality of our judgment in 

ePlus I. Notably, even Lawson did not believe the remand 

was flexible enough to allow for reconsideration of the 

injunction. It resorted to Rule 60(b) in an effort to set 

aside that previous judgment, something it would not 

have had to do if we had actually vacated the injunction 

as the majority’s “clarification” now appears to claim.

Although the majority cites to extensive case law regarding inducement and the requirements for inducement 

as applied to sales of “an apparatus capable of performing 

the method,” Maj. Op. at 21, that case law is inapposite—

the district court and the jury already concluded that 

Lawson induced infringement through sales of the accused configurations, and we affirmed the district court’s 

conclusion that substantial evidence supported that 

result. To use the majority’s words, had we questioned 

the propriety of enjoining sales that infringed claim 26 or 

wanted to vacate the injunction, it would have been easy 

enough to say so. We know how to vacate an injunction 

when we want to; we simply did not do so in this case. 

Saying now that a purported “non-final” injunction, Maj. 

Op. at 15, remained at issue after ePlus I does not make it 

so when the record reflects otherwise.

B 

I turn now to whether Fresenius II mandates the 

decision in this case. The majority claims that it “goes no 

further than we did in Fresenius in deciding this case,” 

Maj. Op. at 16, but the facts of Fresenius II do not bear 

the weight allotted them by the majority. In Fresenius 

II, a panel of this court held that “cancellation of claims 

during reexamination would be binding in concurrent
10 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

litigation,” and, while “cancellation of a patent’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 actual record here is different 

than the record 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 I, 582 F.3d at 1293. 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 preverdict 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 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 11

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 [U.S. Patent No. 

5,247,434].” 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 pre-verdict 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 we found the “scope of relief remain[ed] to be 

determined,” there was “no final judgment binding the 

parties,” and the reexamination “extinguishe[d] the 

underlying basis for suits based on the patent.” Id. at 

1341, 1344. 

 There are crucial differences between the facts in the 

present appeal and the facts in Fresenius II. First, although Fresenius failed to appeal the pre-verdict damages 

judgment from the district court, it did appeal the validity 

of all relevant claims-at-issue, and did move for a new 

trial on pre-verdict damages on remand premised on the 

“further proceedings” language in our remand instruction. 

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

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. 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. 

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

further proceedings consistent with this opinion,” the 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 13

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 

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, the more limited scope of the remand 

order from ePlus I differentiates the present appeal from 

that in Fresenius. 

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

results because the majority said the general scope of 

monetary remedies was not yet final. Even if true in 

Fresenius, 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 

because 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, remained valid under ePlus I. Although 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.5 Maggio v. Zeitz, 

5 The cases the majority relies upon, such as 

McLean v. Central States, Southeast & Southwest 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 

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

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 

of America, AFL-CIO, 545 F.2d 1336 (3d Cir. 1976), all 

involved both the underlying injunction and the contempt 

order simultaneously on direct appeal. The majority 

characterizes these cases as “involv[ing] orders whose 

merits were still subject to review when the civil contempt 

sanctions were reviewed.” Maj. Op. at 15 n.8. 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. 

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 Denial of En Banc, 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. 

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

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

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. 

Although the majority assures us that “[w]e go no further than we did in Fresenius in deciding this case,” Maj. 

Op. at 16, the facts of the instant appeal present a different picture than those recited in the majority opinion and 

show substantial, important distinctions from the facts in 

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

vacate the compensatory contempt award in light of In re 

ePlus.6 And, I believe that the majority today narrows 

even further the already stingy version of finality set 

forth in Fresenius II. 

II

Finally, if the majority is correct that Fresenius II

requires us to vacate the compensatory contempt award,7

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 pro6 As noted, given the grounds for our decision here, 

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

to the contempt findings.

7 And is correct that the present appeal does not “go 

. . . further than we did in Fresenius [II].” Maj. Op. at 16.

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

ceedings, 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 in Fresenius 

II, Fresenius II Denial of En Banc, 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. 

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 to render

both the panel opinion in ePlus I and the district court’s 

judgment regarding validity as 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 
18 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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 branches 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 Denial of En Banc, 733 

F.3d at 1375–77 (O’Malley, J., dissenting from denial of 

petition for rehearing en banc). And the majority opinion

further deepens the circuit split between our court’s 

approach to finality and 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). Although 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 wellestablished 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 17. Even if we had affirmed 

all grounds in ePlus I and did not remand, Lawson could
EPLUS, INC. v. LAWSON SOFTWARE, INC. 19

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?8 

The majority decision today exacerbates the circuit 

split between the Federal Circuit and the United States 

Court of Appeals for the District of Columbia Circuit 

(“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 

8 Indeed, parties have begun reading Fresenius II

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

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). 

 
20 EPLUS, INC. v. LAWSON SOFTWARE, INC. 

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 Denial of En Banc, 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 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 (albeit incorrectly in my view)

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); 
EPLUS, INC. v. LAWSON SOFTWARE, INC. 21

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) (“Finality for 

purposes of collateral estoppel is a flexible concept. . . . ”), 

abrogated on other grounds, Mikels v. City of Durham, 

N.C., 183 F.3d 323 (4th Cir. 1999); 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.

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.