United States Court of Appeals for the Federal Circuit


                                 Miscellaneous No.842




             THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
          ABBOTT MOLECULAR INC., and ABBOTT LABORATORIES INC.,

                                                            Plaintiffs-Petitioners,


                                           v.

                    DAKO NORTH AMERICA, INC. and DAKO A/S,

                                                            Defendants-Respondents.


        Lynn H. Pasahow, Fenwick & West LLP, of Mountain View, California, for
plaintiffs-petitioners. Of counsel were Carolyn Chang, C.J. Alice Chuang, Virginia K.
DeMarchi, and Heather N. Mewes.

       Thomas H. Jenkins, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, of
Washington, DC for defendants-respondents. Of counsel were David C. Hoffman, Tina
E. Hulse, Richard J. Smith, and Anthony C. Tridico.


On Petition for Permission to Appeal from United States District Court Northern District
of California in 05-CV-03955.

Chief Judge Marilyn Hall Patel
 United States Court of Appeals for the Federal Circuit
                          MISCELLANEOUS DOCKET NO. 842

             THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
          ABBOTT MOLECULAR INC., and ABBOTT LABORATORIES INC.,

                                                   Plaintiffs-Petitioners,

                                              v.

                     DAKO NORTH AMERICA, INC. and DAKO A/S,

                                                   Defendants-Respondents.

                     ON PETITION FOR PERMISSION TO APPEAL

Before LOURIE, Circuit Judge, CLEVENGER, Senior Circuit Judge, and MOORE,
Circuit Judge.

LOURIE, Circuit Judge.

                                         ORDER

       The Regents of the University of California et al. (the University) petition for

permission to appeal an order involving claim construction certified by the United States

District Court for the Northern District of California as one involving a controlling issue of

law as to which there is substantial ground for difference of opinion and for which an

immediate appeal may materially advance the ultimate termination of the litigation. See

28 U.S.C. § 1292(b), (c)(1). The University states that Dako North America, Inc. et al.

(Dako) consent.

       In two cases now on appeal in this court, the University has sought review of the

district court’s order denying its motion for a preliminary injunction. In that order, the

district court considered, inter alia, the parties’ arguments concerning claim

construction, made its determination, and denied the motion for a preliminary injunction.

The University appealed from the denial of the motion, and those appeals are now fully
briefed in this court. Oral argument in the pending appeals was postponed at Dako’s

request. After those appeals were filed, based on a more complete record, including

the prosecution history, the district court revisited some of the claim construction issues

that were decided in the pending appeals, and issued an order granting in part and

denying in part Dako’s motion for summary judgment of noninfringement of the two

patents at issue in the pending appeals. The district court certified the order for

permissive appeal, and the University petitions for permission to appeal the order.

       Ultimately, this court must exercise its own discretion in deciding whether it will

grant permission to appeal an interlocutory order certified by a trial court. See In re

Convertible Rowing Exerciser Patent Litigation, 

(Fed. Cir. 1990); 28

U.S.C. § 1292(d)(2) (“the Federal Circuit may, in its discretion, permit an appeal to be

taken from such order”).

       Unlike previous petitions for permission to appeal involving claim construction

issues that were denied, here the district court’s claim construction is already before this

court in the pending appeals regarding the preliminary injunction motion. Any previous

concerns that permitting a 1292(b) appeal might lead to premature reviews, followed by

a later appeal on the same issue after further proceedings in the district court, hence

multiple appeals, are not present here. On the contrary, our consideration of the claim

construction in the present case now in conjunction with the already-pending appeals

would be an efficient use of judicial resources and would facilitate resolution of all of the

claim construction disputes. This is not an ordinary case of claim construction in which,

for example, a district court has decided a claim construction issue and one party

asserts error. Here, the same district court has revisited the claim construction issue

that is before this court. Indeed, were we not to grant the petition, the merits panel in

the pending appeals would be reviewing the district court’s first order based upon the
Misc. 842                                   -2-
limited record before the district court when it considered the motion for a preliminary

injunction, even though the district court itself has now revisited the issue based upon a

more complete record. Because the matters in the recent order are thus intertwined

with the issues in the pending appeals, we determine that granting the petition in these

unusual circumstances is warranted.

        Accordingly,

        IT IS ORDERED THAT:

        (1)   The petition for permission to appeal is granted.

        (2)   When the present appeal is fully briefed, it will be set for oral argument

with the pending appeals, 2006-1334, -1452.

                                                FOR THE COURT



      _Feb 14 2007____                   ____s/Alan D. Lourie___
            Date                               Alan D. Lourie
                                               Circuit Judge

cc:    Lynn H. Pasahow, Esq.
       Richard J. Smith, Esq.




Misc. 842                                 -3-