Metso Minerals Inc. v. Terex Corporation

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
METSO MINERALS INC.,
Plaintiff-Appellant,
v.
TEREX CORPORATION,
Defendant-Appellee,
AND
POWERSCREEN INTERNATIONAL
DISTRIBUTION LIMITED, POWERSCREEN NEW
YORK, INC., AND EMERALD EQUIPMENT
SYSTEMS, INC.,
Defendants.
______________________
2014-1352
______________________
Appeal from the United States District Court for the
Eastern District of New York in No. 2:06-cv-01446-ADS-
ETB, Senior Judge Arthur D. Spatt.
______________________
Decided: December 3, 2014
______________________

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METSO MINERALS INC. v. TEREX CORPORATION 2
MICHAEL C. STUART , Cozen O’Connor, of New York,
New York, for plaintiff-appellant. With him on the brief
was L ISA A. F ERRARI .
J ON R. T REMBATH , Lathrop & Gage LLP, of Denver,
Colorado, for defendant-appellee. With him on the brief
were ALLISON S. WALLIN and ALEXANDER C. CLAYDEN.
______________________
Before L OURIE, D YK, and REYNA, Circuit Judges.
D YK, Circuit Judge.
Metso Minerals, Inc. (“Metso”) appeals a district court
award of bond premium costs to defendants Powerscreen
International Distribution Limited (now known as Terex
GB Limited), Terex Corporation, Powerscreen New York,
Inc., and Emerald Equipment Systems, Inc. (collectively,
“Powerscreen”). Because the award of bond premium
costs was not precluded by this court’s mandate in the
prior appeal, and the district court did not abuse its
discretion in awarding those costs, we affirm.
BACKGROUND
The underlying facts of this case are set forth in our
prior opinion. Metso Minerals, Inc. v. Powerscreen Int’l
Distribution, Ltd., 526 F. App’x 988 (Fed. Cir. 2013).
Metso sued Powerscreen alleging infringement of claims
1, 2, 3, 7, and 9 of U.S. Patent No. 5,577,618 (“the ’618
patent”), which is directed to industrial machines known
as “screeners” which are used to sort rocks and other
aggregate materials into similarly-sized piles. Id. at 990–
91. On March 3, 2011, the district court entered judg-
ment of $15.8 million based on the jury verdict. On
December 8, 2011, the district court doubled the damages
award to $31.6 million due to willful infringement, and
also awarded pre- and post-judgment interest to Metso.

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METSO MINERALS INC. v. TEREX CORPORATION 3
Powerscreen appealed, filing notices of appeal on
January 6, 2012. On June 25, 2012, nearly six months
after the notices of appeal, the district court entered an
order (the “bond order”) staying execution of the judg-
ment1 pending appeal, and provided that “Defendants
shall file an appeal bond in the amount of $50 million by
July 16, 2012. If the Plaintiff does not eventually recover
this full amount, it shall be responsible for its pro rata
share of the cost of the bond.” J.A. 45. On August 3,
2012, the district court entered the bond as an order,
stating that “Plaintiff has agreed that a bond in amount
of $50,000,000 will adequately guarantee Plaintiff of full
payment and that if the ultimate award granted is less
tha[n] $50,000,000, Plaintiff will reimburse Defendants
for the cost of the bond above the amount finally award-
ed.” J.A. 73. Metso never appealed or challenged the
district court’s bond order. Ultimately, we reversed the
district court’s judgment of infringement on the ground
that the asserted claims of the ’618 patent would have
been obvious to a person of ordinary skill in the art (35
U.S.C. § 103). Metso, 526 F. App’x at 998. Importantly
for the purposes of the present appeal, we also determined
that “[n]o costs” would be awarded with respect to the
appeal. Id.
On September 9, 2013, following the issuance of our
mandate, Powerscreen moved for (1) release of the bond;
and (2) reimbursement for $400,000, the amount of the
premium paid for the bond. On September 13, 2013,
1 It is unclear from the record why there was such a
long delay between the March 3, 2011, judgment and the
June 25, 2012, stay. See Fed. R. Civ. P. 62(a) (“Except as
stated in this rule, no execution may issue on a judgment,
nor may proceedings be taken to enforce it, until 14 days
have passed after its entry.”).

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METSO MINERALS INC. v. TEREX CORPORATION 4
Powerscreen amended the motion, seeking an additional
$100,000 to reflect an increased invoice from the surety.
On November 27, 2013, the district court granted Pow-
erscreen’s motion for reimbursement in the amount of
$400,000, because Metso was “liable for its pro rata share,
100%, of the cost of the appeal bond, $400,000.” J.A. 18.
Because the bond orders “were never appealed, and
therefore, in the Court’s view, were not before the Federal
Circuit,” the court “construe[d] the Federal Circuit [“no
costs”] order as applying to costs on appeal other than
bond premiums.” J.A. 18. On January 29, 2014, the
district court granted Powerscreen’s motion to correct the
judgment due to a “clerical mistake” pursuant to Federal
Rule of Civil Procedure 60(a), and amended the judgment
to reflect the additional amount of $100,000, for a total of
$500,000.
Metso appeals. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1). We review the district court’s inter-
pretation of our mandate de novo under Federal Circuit
law. TecSec, Inc. v. Int’l Bus. Machs. Corp., 731 F.3d
1336, 1341 (Fed. Cir. 2013) (citing Laitram Corp. v. NEC
Corp., 115 F.3d 947, 950 (Fed. Cir. 1997)). Apart from the
mandate issue, the district court’s award of costs is not an
issue unique to patent law, so we apply the law of the
regional circuit, in this case the Second Circuit. A district
court’s determination under Rule 60 is reviewed for abuse
of discretion. See Robinson v. Sanctuary Music, 383 F.
App’x 54, 57 (2d Cir. 2010).

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METSO MINERALS INC. v. TEREX CORPORATION 5
D ISCUSSION
Metso argues that the district court’s award of bond
premium costs to Powerscreen contravened this court’s
mandate of “[n]o costs” in the prior appeal.2
2 Federal Rule of Appellate Procedure 39 provides
that the cost of a supersedeas bond is taxable as a cost on
appeal. It states, in pertinent part, that:
(a) Against Whom Assessed. The following rules
apply unless the law provides or the court orders
otherwise:
. . .
(3) if a judgment is reversed, costs are taxed
against the appellee;
. . .
(e) Costs on Appeal Taxable in the District Court.
The following costs on appeal are taxable in the
district court for the benefit of the party entitled
to costs under this rule:
. . .
(3) premiums paid for a supersedeas bond or other
bond to preserve rights pending appeal[.]
Fed. R. App. P. 39. Contrary to Metso’s argument, there
is no requirement that the cost of a supersedeas bond be
included in the bill of costs in the court of appeals. 16AA
Charles Alan Wright & Arthur R. Miller, Federal Practice
and Procedure: Jurisdiction & Related Matters § 3985.1,
at 589–90 (3d ed. 2008) (“Certain of the appeal costs, such
as . . . the paying of appeal-bond premiums . . . are in-
curred only at the district-court level and hence are
taxable only in the district court. Such items should not
be submitted to the clerk of the court of appeals as part of
the bill of costs in that court . . . .”).

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METSO MINERALS INC. v. TEREX CORPORATION 6
“[T]he scope of the . . . mandate, and thus the scope of
the matters removed from the district court’s jurisdic-
tion,” is “coterminous with the scope of the issues deemed
presented to the court on appeal.” Engel Indus., Inc. v.
Lockformer Co., 166 F.3d 1379, 1382 (Fed. Cir. 1999)
(citing Sprague v. Ticonic Nat’l Bank, 307 U.S. 161, 168
(1939)). And “[t]he scope of the issues presented to this
court on appeal must be measured by the scope of the
judgment appealed from.” Id. Thus, “[o]nly the issues
actually decided—those within the scope of the judgment
appealed from, minus those explicitly reserved or re-
manded by the court—are foreclosed from further consid-
eration.” Id. at 1383; see also Exxon Chem. Patents, Inc. v.
Lubrizol Corp., 137 F.3d 1475, 1478 (Fed. Cir. 1998)
(“Even without the express disclaimer in the court’s
opinion, it would be incorrect to conclude that the court’s
mandate encompassed an issue that was not presented to
the court.”); Laitram, 115 F.3d at 951–52 (issues that
were not appealed, and “neither presented to us nor
discussed in our opinion, nor necessary to our disposition
of the appeal,” were not within the scope of the court’s
mandate).
Here, the bond orders at issue were not, and could not
have been, “within the scope of the judgment appealed
from,” Engel, 166 F.3d at 1383, because the notices of
appeal were filed almost six months before the district
court’s June 25, 2012, entry of the first bond order. Thus,
the bond orders were not “presented to the court on ap-
peal,” id. at 1382, and it “would be incorrect to conclude
that the court’s mandate encompassed an issue that was
not presented to the court,” Exxon, 137 F.3d at 1478.
Metso argues that references to the bond order in Pow-
erscreen’s briefs in the prior appeals “affirmatively added
the appellate bond cost issue into the scope and compass”
of the prior mandate. Appellant’s Reply Br. 2–3. The
existence of passing references to the bond in briefs in the

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METSO MINERALS INC. v. TEREX CORPORATION 7
prior appeal does not establish that the bond premium
payments were within the scope of our mandate.
Metso argues, based on a colloquy during a July 22,
2012, hearing on the bond, that there was an agreement
that Metso would not bear the full cost of the bond in the
event of a reversal. But as the district court correctly
found, this contention is without merit. The parties made
no agreement to vary the terms of Federal Rule of Appel-
late Procedure 39 or the terms of the court’s order.
“Metso’s obligation to bear its pro rata share of the bond
premium stems from [the district court’s] June 25, 2012
and August 3, 2012 orders and the plain terms of the bond
itself, not from any agreement or contract entered into by
the parties on the record.” J.A. 19. The bond order is
clear on its face and provides that “[i]f [Metso] does not
eventually recover this full [$50 million] amount, it shall
be responsible for its pro rata share of the cost of the
bond.” J.A. 45. The August 3, 2012, order reiterates that
“if the ultimate award granted is less tha[n] $50,000,000,
Plaintiff will reimburse Defendants for the cost of the
bond above the amount finally awarded.” J.A. 73. Metso
ultimately recovered nothing, so it was liable for its pro
rata share, or 100%, of the bond premium cost.
Finally, Metso argues that the district court abused
its discretion in modifying the judgment to add $100,000
pursuant to Federal Rule of Civil Procedure 60(a) because
the change “was not a clerical mistake or typographical
error.” Appellant’s Br. 31. Although the additional
$100,000 bond premium cost was included in Pow-
erscreen’s September 13, 2013, supplemental declaration
to its September 9, 2013, motion, the district court’s
November 27, 2013, order did not account for that
amount. Rule 60(a) provides that “[t]he court may correct
a clerical mistake or a mistake arising from oversight or
omission whenever one is found in a judgment, order, or
other part of the record.” Fed. R. Civ. P. 60(a). Here, the

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METSO MINERALS INC. v. TEREX CORPORATION 8
district court expressly found that “the omission of the
additional $100,000 payment in the November 27, 2013
decision constituted a ‘clerical mistake’ correctable under
Fed. R. Civ. P. 60(a).” J.A. 9. The court further noted
that it “ma[de] this correction to reflect its ‘contempora-
neous intent’ at the time of the initial decision.” J.A. 11
(citation omitted). The interpretation of its own orders is
within the sound discretion of the district court, and we
decline to accept Metso’s invitation to disturb the court’s
explicit finding that the omission of the $100,000 in its
initial order was a clerical mistake subject to correction
under Rule 60(a). See Cnty. of Suffolk v. Stone & Webster
Eng’g Corp., 106 F.3d 1112, 1117 (2d Cir. 1997) (“It is
peculiarly within the province of the district court . . . to
determine the meaning of its own order, and even if we
regarded the opinion or judgment as ambiguous, we
would not disturb the issuing judge’s interpretation
absent a clear abuse of discretion.” (citations and quota-
tion omitted)). We see no merit in Metso’s contention that
Powerscreen failed to appropriately mitigate its damages.
AFFIRMED
COSTS
Costs to appellee.

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