Nam Jin Yeu and Namjin Industries, Inc.,plaintiffs/counterclaim/defendants-appellants, v. Douglas S.t. Kim, Individually and D/b/a J.h. Upsun Companyand Upsun Corporation, Counterclaimants/defendants-appellees, v. Michael Park A/k/a Hwa Taek Park and Michael Park's Trading& Sales, Inc., Counterclaimants/defendants-appellants, v. S.a. Sales, Inc., Intervening Counterclaimant, 904 F.2d 44 (Fed. Cir. 1990)

On its own motion, the panel of the court has withdrawn the opinion decided on April 20, 1990, and the following opinion is entered on this day.

DECISION

Nam Jin Yeu and Namjin Industries, Inc. (Yeu) and Michael Park and Michael Park's Trading & Sales, Inc. (Park) appeal the United States District Court for the District of Hawaii's Order, dated September 22, 1989, granting a preliminary injunction enjoining Park from "infringing" Douglas S.T. Kim's (Kim's) United States Patent No. 4,545,775. We affirm the preliminary injunction, dismiss Yeu's appeal, and dismiss Park's appeal of copyright rulings as non-final and unappealable.

OPINION

Kim, the party requesting the preliminary injunction, had to show "a right thereto in light of four factors: (1) reasonable likelihood of success on the merits; (2) irreparable harm; (3) the balance of hardships tipping in [his] favor; and (4) the impact of the injunction on the public interest." Hybritech Inc. v. Abbott Laboratories, 849 F.2d 1446, 1451, 7 USPQ2d 1191, 1195 (Fed. Cir. 1988). We construe Park's appeal as asserting that the trial court's legal conclusions were incorrect and as such were erroneously relied upon to make the ultimate conclusion that Kim had established a likelihood of success on the merits.¹  In particular, Park challenges the district court's refusal to consider prosecution history estoppel. Nevertheless, we discern no argument on appeal contesting the other requirements that Kim had to establish to gain a preliminary injunction. Accordingly, we review Park's contentions only for their effect on whether a likelihood of success on the merits was established.

We conclude that Park failed to timely argue and support its prosecution history estoppel defense in the district court, and thus we too decline to consider that argument. See Singleton v. Wulff, 428 U.S. 106, 120 (1976). We see no special circumstances to justify departing from this general rule. See id. at 121. Moreover, we are unpersuaded by Park's contentions and cited cases that the prosecution history must always be considered by the court in construing claims.

Park relies on General Instrument Corp. v. Hughes Aircraft Co., 399 F.2d 373, 158 USPQ 498 (1st Cir. 1968), for the proposition that whether or not raised in the district court in timely fashion, or at all, prosecution history should nevertheless always be reviewed by an appellate court construing claims that were allegedly infringed. Our court, however, is not bound by decisions of other circuits concerning patent law issues, although we may accept persuasive precedents. This court has not followed the First Circuit's approach, but instead has noted that prosecution history estoppel is an equitable doctrine. See, e.g., Black & Decker, Inc. v. Hoover Serv. Center, 886 F.2d 1285, 1295, 12 USPQ2d 1250, 1258 (Fed. Cir. 1983). Accordingly, prosecution history estoppel is not applied as a mandatory rule of construction.

Moreover, in Carman Industries, Inc. v. Wahl, 724 F.2d 932, 942, 220 USPQ 481, 489 (Fed. Cir. 1983), we said that prosecution history estoppel was "an affirmative defense." Under Rule 8(c) of the Federal Rules of Civil Procedure, "estoppel" is among those things that must be timely pled. If not, it is waived. However, we need not decide today whether Rule 8(c) precludes Appellants. We simply are unpersuaded that Park has excused their failure to timely argue a prosecution history estoppel defense.

It is incumbent upon an alleged infringer to present the trial court with the basis for the defense that a patent's prosecution history limits the range of equivalents protected. Here, no such effort was made until after an eleven-day trial and issuance of an eighty-one page decision. Regardless of whether or not Rule 8(c) governs, the failure to argue and support the defense before the end of the trial is inexcusable. Accordingly, we affirm the Order granting a preliminary injunction.

We conclude that Yeu lacks a "distinct and palpable injury" as a result of the district court's Order. See Warth v. Seldin, 422 U.S. 490, 501 (1975). The injunction was not issued against Yeu, but only against Park. Accordingly, Yeu lacks standing to appeal the preliminary injunction. His appeal is therefore dismissed.

We also question the appeal of both Yeu and Park with regard to the copyright issues because they are not ripe for review. No injunction was ordered concerning copyright infringement. Nowhere in the Order is Kim's copyright even mentioned. Accordingly, Yeu and Park have attempted prematurely to appeal the district court's decision as to copyright infringement for which there is plainly neither an injunction nor a final judgment. Nor have Appellants shown any basis for asserting an exception to the requirement of a final judgment. One exception Park could have argued is "pendent jurisdiction." Intermedics Infusaid, Inc. v. Regents of the Univ. of Minn., 804 F.2d 129, 134, 231 USPQ 653, 657 (Fed. Cir. 1986). But even assuming pendent jurisdiction could apply, it would be discretionary. See id. We decline to review on this basis of jurisdiction. This part of their appeal is therefore dismissed.

Moreover, the appeal by Yeu of copyright issues, we conclude, is frivolous. Yeu does not have an appealable issue from which pendent jurisdiction could even arguably be established as to the copyright issues; Yeu lacks standing to appeal the preliminary injunction. We simply cannot condone so burdening the appellate process, including wasting the time of opposing counsel as well as the court, with an improper appeal from non-final and unappealable rulings. Because this portion of the appeal is frivolous, we determine, under authority of Fed. R. App. P. 38, that Yeu shall pay single costs on this appeal within thirty days.

COSTS

In accordance with this court's general rule of assessing costs to the unsuccessful parties, Park and Yeu shall jointly and severally pay single costs. Further, because of their frivolous appeal, Yeu shall pay an additional single costs.