BOARD OF EDUCATION OF THE STATE OF FLORIDA (for v. AMERICAN BIOSCIENCE, INC. (formerly known as Vivorx Pharmaceuticals, Inc.)

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
Is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
04-1128
BOARD OF EDUCATION OF THE STATE OF FLORIDA
(for and on behalf of the Board of Regents of Florida State University),
MDS RESEARCH FOUNDATION, INC., and TAXOLOG, INC.,
Plaintiffs-Appellees,
v.
AMERICAN BIOSCIENCE, INC.
(formerly known as Vivorx Pharmaceuticals, Inc.),
Defendant-Appellant,
and
CHUNLIN TAO,
Defendant.
___________________________
DECIDED: February 22, 2005
___________________________
Before MICHEL, Chief Judge,* NEWMAN and RADER, Circuit Judges.
RADER, Circuit Judge.
Following entry of the mandate in The Bd. of Educ. v. Am. Bioscience, Inc., 333
F.3d 1330 (Fed. Cir. 2003) (ABI I), American Bioscience, Inc. (ABI) filed a motion in the
United States District Court for the Northern District of Florida (district court) seeking
entry of an amended judgment to reflect better this court’s findings on inventorship, and
*Paul R. Michel assumed the position of Chief Judge on December 25, 2004.

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costs. The district court dismissed for lack of jurisdiction. Bd. of Educ. v. Am.
Biosciences, Inc., Case No. 4:99cv/131/RV (N.D. Fla. Oct. 21, 2003) (ABI II). Because
the district court has jurisdiction to award costs, this court reverses and remands for the
district court to determine whether any assessment of fees is appropriate. This court
affirms the district court’s dismissal for lack of jurisdiction to amend its prior judgment
after this court’s decision in ABI I.
BACKGROUND
ABI initiated this case in a California district court in October 1998. ABI sought
damages for the infringement of U.S. Patent No. 5,780,653 (the ’653 patent), a
declaratory judgment of inventorship and ownership with respect to the ’653 patent, and
an injunction restraining the Board of Education of the State of Florida (for and on behalf
of the Board of Regents of Florida State University), MDS Research Foundation, Inc.,
and Taxolog, Inc. (FSU) from using any compounds described in the ’653 patent. The
California district court transferred the case to the Florida district court. FSU asserted
seven counts against ABI. ABI voluntarily dismissed three causes of action. Before
trial, FSU accepted ABI’s settlement offer of $300,000 resulting in a final judgment on
counts I-VI.
The bench trial on FSU’s remaining count for declaratory relief proceeded
thereafter, resulting in the district court’s November 5, 2001 judgment. Bd. of Educ. v.
Am. Biosciences, Inc., Case No. 4:99cv/131/RV (N.D. Fla. Nov. 5, 2001) (Judgment).
On appeal, this court reversed in part, affirmed in part, and vacated in part. ABI I.
Following entry of the mandate in ABI I, ABI filed a motion in the district court seeking
entry of an amended judgment reflecting this court’s findings on inventorship, and taxing
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costs in favor of ABI. The district court refused to entertain those motions on grounds
that it was “without jurisdiction” to do so. ABI II. ABI contends that this was error and
appeals the district court’s order. This court has jurisdiction under 28 U.S.C. § 1295(a).
DISCUSSION
With respect to the charge that the district court erred in denying ABI’s motion for
an amended judgment and further erred in denying ABI’s motion to tax costs, this court
generally reviews such decisions for an abuse of discretion. Fiskars, Inc. v. Hunt Mfg.,
279 F.3d 1378, 1381-82 (Fed. Cir. 2002). “A district court abuses its discretion when its
decision is based on clearly erroneous findings of fact, is based on erroneous
interpretations of the law, or is clearly unreasonable, arbitrary or fanciful.” Cybor Corp.
v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc). To the extent that
this court reviews the district court’s interpretation of ABI I, however, the standard of
review is de novo. Tronzo v. Biomet, Inc., 236 F.3d 1342, 1346 (Fed. Cir. 2001).
The district court correctly dismissed for lack of jurisdiction to amend its prior
judgment after ABI I. This court states: “Unless remanded by this court, all issues within
the scope of the appealed judgment are incorporated within the scope of the mandate
and are thus precluded from further adjudication.” Odetics, Inc. v. Storage Tech. Corp.,
185 F.3d 1259, 1275 (quoting Engel Indus. Inc. v. Lockformer Co., 166 F.3d 1379,
1383). Because ABI I remanded no issues to the district court, the district court
correctly ruled that it did not have jurisdiction to proceed further. ABI has not cited any
rules or precedents to the contrary.
However, the district court retains jurisdiction with respect to ABI’s motion to tax
costs. In denying ABI’s motion to tax costs, the district court reasoned:
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I am likewise without jurisdiction to re-examine the Federal Circuit’s
decision that each party bear its own costs because the taxation of costs
was within the scope of the judgment ABI appealed and any dispute over
that issue appears to have been resolved by the Federal Circuit.
Accordingly, ABI’s motions to amend the judgment and to tax costs are
DENIED.
ABI II at 2. While the issue of appellate costs was within the scope of this court’s
mandate in ABI I, the issue of district court costs was not. Nothing in this court’s
mandate in ABI I precluded the district court from addressing the issue of district court
costs following ABI I. In the final sentence of ABI I, this court declared that “[e]ach party
. . . [shall] bear its own costs[].” This declaration merely addressed appellate costs. ABI
I at 1344. As a result, this court reverses the order of the district court in ABI II and
remands to permit the district court to consider ABI’s motion to tax costs. Any
assessment of fees will be within the discretion of the district court.
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