USCA1 Opinion

December 28, 1995

[NOT FOR PUBLICATION]

United States Court of Appeals
United States Court of Appeals
For the First Circuit
For the First Circuit
____________________

No. 95-1793

IN RE: BORLAND INTERNATIONAL, INC.,

Petitioner,

_____________________
No. 95-1885

LOTUS DEVELOPMENT,

Plaintiff, Appellee,,

v.

BORLAND INTERNATIONAL, INC.,

Defendant, Appellant.

____________________

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS CONSOLIDATED WITH
PETITION FOR WRIT OF MANDAMUS

[Hon. Douglas P. Woodlock, U.S. District Judge]

___________________
____________________

Before
Torruella, Chief Judge,
___________
Boudin and Stahl, Circuit Judges.
______________
____________________

Steven Brower with

______________
Oringher & Richman,
____________________

whom

Joel D. Covelman,
_________________

Peter E. Gelhaar,
__________________

Ginsburg, Steph
________________

Katherine L. Parks,
____________________

Donnelly, Conroy & Gelhaar were on brief for appellant/petitioner.

__________________________
Henry B. Gutman with
________________
Lori E.

whom Kerry L. Konrad,

________________

Jeffrey E. Ostr
________________

Lesser, Baker & Botts, L.L.P., Thomas M. Lemberg and Hale

_______________

_____________________

_________________

Dorr were on brief for appellee/respondent.

____
_____________________

_____________________

_____

STAHL,
STAHL,

Circuit Judge.
Circuit Judge.
______________

software copyright

battle

Although

between Lotus

the

pitched

Development

Corp.

("Lotus") and Borland International, Inc. ("Borland") is

now

before

reverse

two

by appeal or by mandamus.

We

the

Supreme

Court,

district court orders, either

Borland seeks

to

defer our decision on the appeal for prudential

reasons, and

deny the petition for a writ of mandamus.

I.
I.
__

BACKGROUND
BACKGROUND
__________

Lotus

has

waged a

protracted

litigation against

Borland, alleging that Borland infringed Lotus's copyright in

"Lotus 1-2-3",

a popular

and extremely successful

computer

spreadsheet program.

See Lotus Dev. Corp. v. Borland Int'l,

___ ________________
_______________

Inc.,
____

49 F.3d 807, 809 (1st Cir. 1995) (citing four district

court

decisions in this case).

District Court

Borland

In 1993,

for the District of

had copied

Lotus

the United States

Massachusetts ruled that

1-2-3's menu

command hierarchy;1

accordingly, the court entered a permanent injunction against

Borland.

Lotus Dev. Corp.

_________________

v. Borland Int'l, Inc., 831

____________________

F.

Supp. 223, 245 (D. Mass. 1993).

____________________

1.

The menu command hierarchy

of operating commands (e.g.,

are

arranged

submenus.

in a

Each

linked

menu is

is the 1-2-3 program's system

"Open"; "Save"; "Delete")

hierarchy of
a list

command

of commands

that

menus and

displayed on-

screen.

The user selects a command by highlighting it on the

menu or typing its first letter.

-22

Borland

appealed the

injunction.

By the time

proceedings

had narrowed

alleged infringement

infringement ruling

of that appeal,

the

of the

and the

the district court

copyright claim

to Borland's

menu command hierarchy.

Lotus

did

not contend on appeal

finding that

that the district

Borland had not

Lotus 1-2-3.

copied any

In March 1995, this court

command hierarchy of Lotus 1-2-3 was a

not protectible

by copyright,

other elements

of

ruled that the menu

"method of operation"

as provided

102(b), reversing the judgment of the

Dev. Corp. v.
___________

court erred in

in

17 U.S.C.

district court.

Borland Int'l, Inc., 49

____________________

F.3d 807

Lotus
_____

(1st Cir.

1995).

Lotus

filed a

petition

United States

Supreme Court.

was pending,

Borland filed a

seeking the

that

entry of

our opinion had

for

While

certiorari with

the certiorari petition

motion in

final judgment

the

the district

in its favor,

rejected the only

court

arguing

remaining basis for

Lotus's

case.

further

proceedings until

certiorari

Lotus countered

or

ruled

the Supreme

on the

merits

district court denied Borland's

granted the

that "the

which

with a

motion to

Court

of

the

raises

issues

further judicial

petition for writ

sufficiently

review[,] coupled

-33

either denied

appeal.

The

motion to enter judgment and

stay that Lotus requested, noting

pendency of the

stay all

in the margin

of certiorari,

meritorious

to

permit

with the absence

of any

cognizable

harm

certiorari

to the

defendant

proceedings[,]

potentially unnecessary

during

counsels

the pendency

against

-- proceedings in

further

this court

of

--

until

the petition is resolved."

Borland now appeals the district court's refusal to

enter

final judgment

and

its grant

of

a stay

until

the

Supreme Court decided Lotus's appeal.

Apparently recognizing

that

to

this

court

might

find

these

be

non-appealable

interlocutory orders, Borland seeks in the alternative a writ

of mandamus

and

directing the

to dissolve

its

district court to

stay order.

enter judgment

While this

appeal

and

petition were

pending, the Supreme Court granted certiorari,

Lotus Dev. Corp. v. Borland Int'l, Inc., 116 S. Ct. 39 (Sept.

________________
___________________

27, 1995), and scheduled arguments for January 1996.

II.
II.
___

BORLAND'S APPEAL
BORLAND'S APPEAL
________________

Borland appeals the district court's orders denying

Borland's motion

to

enter

judgment

and

granting

Lotus's

motion for a stay of proceedings.

We have significant doubts

as

the

to

our jurisdiction

appear to

U.S.C.

be neither

1291 nor

"collateral order"

because

orders appealed

"final decisions" reviewable

under 28

appealable interlocutory orders under

doctrine

of Cohen
_____

from

the

v. Beneficial Indus.
__________________

Loan Corp,
_________

337 U.S. 541

notwithstanding,

we

(1949).

believe

Our

the

jurisdictional doubts

wisest

course

at

this

-44

juncture

is

questions and

to defer

our

the merits

decision

on the

until the Supreme

jurisdictional

Court announces

its decision in this case.

Co.,
___

744 F.2d

See, e.g., Glater v. Eli Lilly &

___ ____ ______
___________

213, 214 (1st

until Supreme Court decides

recognize that this appeal

Cir. 1984)

(decision deferred

key issue in another case).

We

will almost certainly become moot

when the Supreme Court rules, but that fact counsels against,

not

for,

our

deciding the

appeal

now.

Thus, we

defer

decision on this appeal until the Supreme Court announces its

decision in this case.

III.
III.
____

BORLAND'S PETITION FOR WRIT OF MANDAMUS

BORLAND'S PETITION FOR WRIT OF MANDAMUS
_______________________________________

Federal

prerogative writs

appellate

courts are

that are "necessary or

empowered

to issue

appropriate in aid

of their respective jurisdictions,"

that power must be

in

Lloyd's, London, 6
________________

F.3d

must

(1st

bear only

Underwriters at
________________

Cir. 1993).

writ of mandamus

The

are high: a

both

that the

challenged

palpably erroneous

and that

he faces

some special

irreparable

In re Cargill, Inc., 66
____________________

harm.

show

Doughty v.
_______

856, 865

for issuance of the

petitioner

1651(a), but

used stintingly and brought to

extraordinary situations.

standards

28 U.S.C.

order

is

risk of

F.3d 1256, 1260

(1st Cir. 1995); United States v. Horn, 29 F.3d 754, 769 (1st
_____________
____

Cir. 1993); Doughty, 6 F.3d at 865.

_______

do

not

necessarily require

And, even these showings

a court's

use

of the

writ of

-55

mandamus, which, as an

only in the exercise

exceptional remedy, is to

of sound discretion.

be granted

Cargill,
_______

66 F.3d

at 1260.

This petition does

palpable

error

mandamus.

As

and

to

not present the

irreparable harm

the

combination of

necessary

district court's

refusal

to justify

to

enter

judgment for Borland,

that

we note that our mandate directed only

the judgment for Lotus be reversed.

complied by vacating the

injunction.

We did not

entry of judgment for Borland; although

expected to follow

in due

The district court

direct the

that result might be

course, this is

not a

situation

where the court below has ignored our clear mandate.

As to

resources

the stay, it would be a poor use of judicial

in the

district

court at this time, given that the Supreme Court is

about to

hear

to conduct

Lotus's

further

appeal.

proceedings

Whatever

Borland's

concern

about

interest on an attorney fee award, the decision when to enter

judgment

in a

case where

review the appeals

the Supreme

court's own decision

Court has

agreed to

is obviously not

candidate for mandamus.

IV.
IV.
___

CONCLUSION
CONCLUSION
__________

For the foregoing reasons, we defer our decision in

Borland's appeal, No. 95-1885, and we deny Borland's petition

for a writ of mandamus, No. 95-1793.

-66

Petition for writ of mandamus denied.

Petition for writ of mandamus denied.
_____________________________________

either party.
either party.
_____________

No costs to
No costs to
___________

-77