United States District Court, E.D. Texas, Sherman Division
TEXAS ADVANCED OPTOELECTRONIC SOLUTIONS, INC.
RENESAS ELECTRONICS AMERICA INC. f/k/a INTERSIL CORPORATION
MEMORANDUM OPINION AND ORDER
L. MAZZANT, UNITED STATES DISTRICT JUDGE.
before the Court is Plaintiff Texas Advanced Optoelectronic
Solutions, Inc.’s (“TAOS”) Motion for Entry
of Partial Judgment under Federal Rule of Civil Procedure
54(b) (Dkt. #617). Having considered the motion and the
relevant pleadings, the Court finds that the motion should be
3, 2004, the parties entered into a letter
“Confidentiality Agreement” to explore a possible
business relationship. Pursuant to the terms of the
Confidentiality Agreement, the parties exchanged confidential
information; however, the parties were ultimately unable to
agree on the terms of a business relationship and discussions
regarding acquisition of TAOS by Defendant Renesas
Electronics America Inc. f/k/a Intersil Corporation
(“Renesas”) ended. The Plaintiff subsequently
reached the conclusion that the Defendant unfairly used the
Plaintiff’s confidential information to create a line
of digital ambient light sensors that compete with the
Plaintiff’s ambient light sensors. As such, on November
25, 2008, the Plaintiff filed suit against the Defendant
alleging claims for patent infringement, breach of contract,
trade secret misappropriation, and tortious interference with
prospective business relations (Dkt. #1).
case has come a long way since 2008. On October 13, 2009, the
Defendant filed its original answer and counterclaims,
asserting 14 affirmative defenses and five counterclaims
(Dkt. #88). After extensive summary judgment briefing, the
case proceeded to a jury trial on February 9, 2015. At the
conclusion of the trial on March 6, 2015, the jury found
that: (1) the Defendant breached its contract (the
Confidentiality Agreement) with the Plaintiff; (2) the
Defendant misappropriated the Plaintiff’s trade
secrets; (3) the Defendant’s misappropriation of the
Plaintiff’s trade secrets resulted from the
Defendant’s fraud, malice, or gross negligence; (4) the
Defendant did not prove that the Plaintiff must have known or
must have been reasonably able to discover that the Defendant
had used the Plaintiff’s proprietary information to
create competing products before November 25, 2005; (5) the
Plaintiff proved that the Defendant fraudulently concealed
the facts upon which the Plaintiff’s misappropriation
of trade secrets claim was based; (6) the Defendant
intentionally interfered with the Plaintiff’s
prospective business relations with Apple; (7) the
Defendant’s tortious interference was the result of
fraud, malice, or gross negligence; (8) the Defendant
willfully infringed the ’981 patent; (9) the Defendant
did not prove that any of the claims of the ’981 patent
were invalid due to obviousness, for failing to satisfy the
written description requirement, or for failing to contain a
sufficiently full and clear description of how to make and
use the full scope of the claimed invention; (10) the
Defendant did not prove that the Defendant’s conduct
was excused because of laches; and (11) the Defendant did not
prove that the Plaintiff had unclean hands (Dkt. #511).
judgment was entered on June 9, 2016 (Dkt. #596). Renesas
appealed the final judgment to the United States Court of
Appeals for the Federal Circuit on June 10, 2016 (Dkt. #598).
The Federal Circuit affirmed in part, reversed in part, and
vacated in part the final judgment and remanded the case
(Dkt. #614, Attachment 1). On August 9, 2019, Judge
Schelltransferred this case to the Court (Dkt.
August 20, 2018, TAOS filed its Motion for Entry of Partial
Judgment under Federal Rule of Civil Procedure 54(b) on its
tortious interference and breach of contract claims (Dkt.
#617). On November 1, 2018, Renesas filed its response in
opposition to the Motion (Dkt. #641). On November 8, 2018,
TAOS filed its reply; Renesas filed its sur-reply on November
15, 2018 (Dkt. #643; Dkt. #646).
basic purpose of Federal Rule of Civil Procedure 54(b)
“is to avoid the possible injustice of a delay in
entering judgment on a distinctly separate claim or as to
fewer than all of the parties until the final adjudication of
the entire case by making an immediate appeal
available.” 10 Charles Alan Wright & Arthur R.
Miller, Federal Practice and Procedure § 2654 (4th ed.
2019). However, immediate appeal is only available when the
court certifies the matter for appeal by: (1) directing entry
of a final judgment as to some of the claims or parties; and
(2) expressly determining that “there is no just reason
for delay.” Fed.R.Civ.P. 54(b).
54(b) also “allows parties to seek reconsideration of
interlocutory orders and authorizes the district court to
revise at any time any order or other decision that does not
end the action.” Dolores Lozano v. Baylor
Univ., No. 6:16-CV-403-RP, 2018 WL 3552351, at *1 (W.D.
Tex. July 24, 2018) (quoting Austin v. Kroger Tex.,
L.P., 864 F.3d 326, 336 (5th Cir. 2017)). Accordingly,
“[u]nder Rule 54(b), ‘the trial court is free to
reconsider and reverse its [interlocutory] decision for any
reason it deems sufficient, even in the absence of new
evidence or an intervening change in or clarification of the
substantive law.’” Austin, 864 F.3d at
336 (quoting Lavespere v. Niagara Mach. & Tool Works,
Inc., 910 F.2d 167, 185 (5th Cir. 1990), abrogated
on other grounds, Little v. Liquid Air Corp.,
37 F.3d 1069, 1075 n.14 (5th Cir. 1994)).
requests relief that the Court cannot provide under Rule
54(b). TAOS asks for “non-final partial judgment”
under Rule 54(b) on its tortious interference and breach of
contract claims (Dkt. #617 at p. 9; Dkt. #643 at p. 3). TAOS
does not ask the Court to certify the matter for appeal by
entering final judgment and determining that there is no just
reason for delay of an appeal.Nor does TAOS ask the Court to
reconsider a prior interlocutory order. Instead, TAOS asks
the Court to enter “non-final judgment” under
Rule 54(b) on two of its claims because, according to TAOS,
non-final judgments are routinely entered to narrow the scope
of issues for trial under Rule 54(b). TAOS is incorrect.
54(b) states, in full:
When an action presents more than one claim for
relief-whether as a claim, counterclaim, crossclaim, or
third-party claim-or when multiple parties are involved, the
court may 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 there is no just reason for delay.
Otherwise, any order or other decision, however designated,
that adjudicates fewer than all the claims or the rights and
liabilities of fewer than all the parties does not end the
action as to any of the claims or parties ...