Court of Appeals Docket #: 93-5202 Filed: 4/14/93 Nsuit: 3840 Property Rights: Trademark Unix Sys Lab Inc v. Berkeley Software, et al Appeal from: United States District Court for the District of New Jersey - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Lower court information: District: 0312-2 : 92-01667 Court Reporter: Howard A. Rappaport Trial Judge: Dickinson R. Debevoise, District Judge Date Filed: 4/20/92 Date order/judgment: 4/1/93 Date NOA filed: 4/6/93 - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Fee status: paid - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Prior cases: None Current cases: Lead Member Start End Cross-appeal: 93- 5202 93- 5235 4/28/93 4/29/93 - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Panel Assignment: Panel: MIG JRR LHP : 2/4/94 Date of decision: **/**/** - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Docket as of April 24, 2001 10:36 pm Page 1 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al UNIX SYS LAB INC Michael D. Loprete Appellant 201-596-4500 [COR NTC ret] Gary F. Werner 201-596-4500 [COR NTC ret] Gibbons, Del Deo, Dolan, Griffinger & Vecchione One Riverfront Plaza Newark, NJ 07102-5497 George L. Graff 212-318-6019 [COR NTC ret] Paul, Hastings, Janofsky & Walker 399 Park Avenue 31st Floor New York, NY 10022 v. BERKELEY SOFTWARE DESIGN, INC. James H. Forte Appellee 201-622-3333 [COR NTC ret] Saiber, Schlesinger, Satz & Goldstein One Gateway Center Suite 1300 Newark, NJ 07102-5311 Leslie A. Fithian [COR NTC ret] Apple Computers 10431 North De Anza Boulevard Cupertino, CA 95014 W. ELLIOT BROWNIEE, in their collective capacity as the Regents of the University of California ZZ#not_participating S. STEPHEN NAKASHIMA, in their collective capacity as the Regents of the University of California ZZ#not_participating PETE WILSON, in their collective capacity as the Regents of the University of California Docket as of April 24, 2001 10:36 pm Page 2 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al ZZ#not_participating LEO T. MCCARTHY, in their collective capacity as the Regents of the University of California ZZ#not_participating WILLIE L. BROWN, JR., in their collective capacity as the Regents of the University of California ZZ#not_participating BILL HONIG, in their collective capacity as the Regents of the University of California ZZ#not_participating DAVID P. GARDNER, in their collective capacity as the Regents of the University of California ZZ#not_participating RALPH M. OCHOA, in their collective capacity as the Regents of the University of California ZZ#not_participating GAIL G. ANDERSON, in their collective capacity as the Regents of the University of California ZZ#not_participating WILLIAM T. BAGLEY, in their collective capacity as the Regents of the University of California ZZ#not_participating ROY T. BROPHY, in their collective capacity as the Regents of the University of California ZZ#not_participating CLAIR W. BURGENER, in their collective capacity as the Regents of the University of California Docket as of April 24, 2001 10:36 pm Page 3 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al ZZ#not_participating YVONNE BRATHWAITE BURKE, in their collective capacity as the Regents of the University of California ZZ#not_participating GLENN CAMPBELL, in their collective capacity as the Regents of the University of California ZZ#not_participating FRANK W. CLARK, JR., in their collective capacity as the Regents of the University of California ZZ#not_participating DIANA DARNELL, in their collective capacity as the Regents of the University of California ZZ#not_participating TIRSO DEL JUNCO, in their collective capacity as the Regents of the University of California ZZ#not_participating ALICE J. GONZALES, in their collective capacity as the Regents of the University of California ZZ#not_participating JEREMIAH F. HALLISEY, in their collective capacity as the Regents of the University of California ZZ#not_participating S. SUENSON JOHNSON, in their collective capacity as the Regents of the University of California ZZ#not_participating MEREDITH J. KHACHIGIAN, in their collective capacity as the Regents of the Univeristy of California Docket as of April 24, 2001 10:36 pm Page 4 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al ZZ#not_participating LEO S. KOLLIGIAN, in their collective capacity as the Regents of the University of California ZZ#not_participating HOWARD H. LEACH, in their collective capacity as the Regents of the University of California ZZ#not_participating YORI WADA, in their collective capacity as the Regents of the University of California ZZ#not_participating DEAN A. WATKINS, in their collective capacity as the Regents of the University of California ZZ#not_participating HAROLD M. WILLIAMS, in their collective capacity as the Regents of the University of California ZZ#not_participating JACQUES S. YEAGER, in their collective capacity as the Regents of the University of California ZZ#not_participating CARL J. STONEY, JR., in their collective capacity as the Regents of the University of California ZZ#not_participating PAUL HALL, in their collective capacity as the Regents of the University of California ZZ#not_participating MARTIN A. TROW, in their collective capacity as the Regents of the University of California ZZ#not_participating Docket as of April 24, 2001 10:36 pm Page 5 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al ------------------------- REGENTS UNIV CA ZZ#not_participating AMERICAN COMMITTEE FOR Peter M.C. Choy INTEROPERABLE SYSTEMS 415-336-2482 Amicus-appellee [COR NTC ret] SUN Microsystems, Inc. 2550 Garcia Avenue #PAL 1-521 Mountain View, CA 94043 Docket as of April 24, 2001 10:36 pm Page 6 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al UNIX SYS LAB INC Appellant v. BERKELEY SOFTWARE DESIGN, INC.; Appellee W. ELLIOT BROWNIEE, in their collective capacity as the Regents of the University of California; S. STEPHEN NAKASHIMA, in their collective capacity as the Regents of the University of California; PETE WILSON, in their collective capacity as the Regents of the University of California; LEO T. MCCARTHY, in their collective capacity as the Regents of the University of California; WILLIE L. BROWN, JR., in their collective capacity as the Regents of the University of California; BILL HONIG, in their collective capacity as the Regents of the University of California; DAVID P. GARDNER, in their collective capacity as the Regents of the University of California; RALPH M. OCHOA, in their collective capacity as the Regents of the University of California; GAIL G. ANDERSON, in their collective capacity as the Regents of the University of California; WILLIAM T. BAGLEY, in their collective capacity as the Regents of the University of California; ROY T. BROPHY, in their collective capacity as the Regents of the University of California; CLAIR W. BURGENER, in their collective capacity as the Regents of the University of California; YVONNE BRATHWAITE BURKE, in their collective capacity as the Regents of the University of California; GLENN CAMPBELL, in their collective capacity as the Regents of the University of California; FRANK W. CLARK, JR., in their collective capacity as the Regents of the University of California; DIANA DARNELL, in their collective capacity as the Regents of the University of California; TIRSO DEL JUNCO, in their collective capacity as the Regents of the University of California; ALICE J. GONZALES, in their collective capacity as the Regents of the University of California; JEREMIAH F. HALLISEY, in their collective capacity as the Regents of the University of California; S. SUENSON JOHNSON, in their collective capacity as the Regents of the University of California; MEREDITH J. KHACHIGIAN, in their collective capacity as the Regents of the Univeristy of California; LEO S. KOLLIGIAN, in their collective capacity as the Regents of the University of California; HOWARD H. LEACH, in their collective capacity as the Regents of the University of California; YORI WADA, in their collective capacity as the Regents of the University of California; DEAN A. WATKINS, in their collective capacity as the Regents of the University of California; HAROLD M. WILLIAMS, in their collective capacity as the Regents of the Docket as of April 24, 2001 10:36 pm Page 7 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al University of California; JACQUES S. YEAGER, in their collective capacity as the Regents of the University of California; CARL J. STONEY, JR., in their collective capacity as the Regents of the University of California; PAUL HALL, in their collective capacity as the Regents of the University of California; MARTIN A. TROW, in their collective capacity as the Regents of the University of California ZZ#not_participating ------------------------- REGENTS UNIV CA; ZZ#not_participating AMERICAN COMMITTEE FOR INTEROPERABLE SYSTEMS Amicus-appellee Docket as of April 24, 2001 10:36 pm Page 8 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al 4/14/93 CIVIL CASE DOCKETED. Notice filed by Unix System Laboratories, Inc. (lld) [93-5202] 4/21/93 APPEARANCE from Attorney George L. Graff on behalf of Appellant Unix Sys Lab Inc, filed. (lld) [93-5202] 4/21/93 INFORMATION STATEMENT on behalf of Appellant Unix Sys Lab Inc, RECEIVED. (lld) [93-5202] 4/21/93 (POSITIVE) DISCLOSURE STATEMENT filed on behalf of Appellant Unix Sys Lab Inc advising: (1) American Telephone & Telegraph Co. (2) Novell Inc., under contract to purchase plaintiff's stock. (agb) [93-5202] 4/23/93 APPEARANCE from Attorney James H. Forte on behalf of Appellee Berkeley Software, filed. (lld) [93-5202] 4/23/93 DISCLOSURE STATEMENT on behalf of Appellee Berkeley Software, filed. (lld) [93-5202] 4/26/93 APPEARANCE from Attorney Leslie A. Fithian on behalf of Appellee Berkeley Software, filed. (lld) [93-5202] 4/26/93 DISCLOSURE STATEMENT on behalf of Appellee Berkeley Software, filed. (lld) [93-5202] 4/27/93 FOLLOW UP LETTER to Mary E. MacDonald, John F. Lundberg, James E. Holst, Carla J. Shapreau, Joel Linzner, and Frederick B. Polak requesting the following documents: **Appearance Form **Disclosure Statement (lld) [93-5202] 4/29/93 CLERK ORDER (Rule 28(2) - Tpo): Procedurally Terminated Without Judicial Action; Default. (93-5235) (mgd) [93-5202] 4/29/93 Certified copy of Order sent to Clerk of District Court. (mgd) [93-5202] 5/3/93 APPEARANCE from Attorney Joel Linzner on behalf of Appellees, Regents Univ CA, W. Elliot Browniee, S. Stephen Nakashima, Pete Wilson, Leo T. McCarthy, Willie L. Brown, Bill Honig, David P. Gardner, Ralph M. Ochoa, Gail G. Anderson, William T. Bagley, Roy T. Brophy, Clair W. Burgener, Yvonne Brathwaite Burke, Glenn Campbell, Frank W. Clark, Diana Darnell, Tirso Del Junco, Alice J. Gonzales, Jeremiah F. Hallisey, S. Suenson Johnson, Meredith J. Khachigian, Leo S. Kolligian, Howard H. Leach, Yori Wada, Dean A. Watkins, Harold M. Williams, Jacques S. Yeager, Carl J. Stoney, Paul Hall, and Martin A. Trow, filed. ***[10/25/93 APPEARANCE WITHDRAWN] (lld) [93-5202] Docket as of April 24, 2001 10:36 pm Page 9 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al 5/3/93 DISCLOSURE STATEMENT on behalf of Appellees, Regents Univ CA, W. Elliot Browniee, S. Stephen Nakashima, Pete Wilson, Leo T. McCarthy, Willie L. Brown, Bill Honig, David P. Gardner, Ralph M. Ochoa, Gail G. Anderson, William T. Bagley, Roy T. Brophy, Clair W. Burgener, Yvonne Brathwaite Burke, Glenn Campbell, Frank W. Clark, Diana Darnell, Tirso Del Junco, Alice J. Gonzales, Jeremiah F. Hallisey, S. Suenson Johnson, Meredith J. Khachigian, Leo S. Kolligian, Howard H. Leach, Yori Wada, Dean A. Watkins, Harold M. Williams, Jacques S. Yeager, Carl J. Stoney, Paul Hall, and Martin A. Trow, filed. (lld) [93-5202] 5/4/93 TRANSCRIPT PURCHASE ORDER (Part I), already on file in the District Court Clerk's Office, filed. (mgd) [93-5202] 5/4/93 MOTION filed by Appellant, Unix Sys Lab Inc, to reinstate appeal. Certificate of Service dated 5/3/93. (ma) [93-5202] 5/11/93 CLERK'S LETTER to counsel advising appeal has been listed for possible dismissal due to jurisdictional defect. (Cvs. 93-5202 & 93-5235) ZZ#SEND ZZ#TO ZZ#MERITS ZZ#PANEL (lld) [93-5202] 5/21/93 RESPONSE filed by Appellee Berkeley Software to clerk letter advising possible dismissal due to jurisdictional defect. Certificate of Service dated 5/20/93. (Cvs. 93-5202 & 93-5235) ZZ#SEND ZZ#TO ZZ#MERITS ZZ#PANEL (ma) [93-5202] 6/1/93 APPEARANCE from Attorney Gary F. Werner on behalf of Appellant Unix Sys Lab Inc, filed. (lld) [93-5202] 6/9/93 CLERK'S LETTER to counsel advising that jurisdictional defect will not be submitted at this time. In the event the appeal is reinstated, responses will be sent to the merits panel, etc. ZZ#SEND ZZ#TO ZZ#MERITS ZZ#PANEL (ma) [93-5202] 6/14/93 APPEARANCE from Attorney Michael D. Loprete on behalf of Appellant Unix Sys Lab Inc, filed. (lld) [93-5202] 6/23/93 ORDER (Greenberg, Authoring Judge and Hutchinson, Circuit Judges) granting motion by appellant to reinstate appeal, filed. Reopening Case: on 6/23/93. (mgd) [93-5202] 6/23/93 Certified copy of Order sent to Clerk of District Court. (mgd) [93-5202] 6/23/93 BRIEFING NOTICE ISSUED. Appellant brief and appendix due 8/2/93. (mgd) [93-5202] 7/9/93 CERTIFIED LIST filed. (mgd) [93-5202] Docket as of April 24, 2001 10:36 pm Page 10 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al 7/28/93 APPENDIX on behalf of Appellant Unix Sys Lab Inc, Copies: 4, Volumes: 7, Delivered by mail, filed. Certificate of service date 7/28/93. (jlb) [93-5202] 7/30/93 BRIEF on behalf of Appellant Unix Sys Lab Inc, Pages: 48, Copies: 10, Delivered by mail, filed. Certificate of service date 7/30/93. Motion to seal requested. (jlb) [93-5202] 8/6/93 MOTION filed by Appellant, Unix Sys Lab Inc, to seal the appendix and all briefs on this appeal. Certificate of Service dated 8/4/93. ZZ#SEND ZZ#TO ZZ#MERITS ZZ#PANEL (ma) [93-5202] 8/11/93 ORDER (Clerk) referring to the merits panel the motion by Appellant, Unix Sys Lab Inc, to seal the appendix and all briefs in appeal. Pending disposition of the motion by the merits panel, the Clerk is directed to hold the appendix and all briefs under seal. The protective order issued by the district court on 9/14/92 remains in effect, filed. (ma) [93-5202] 8/20/93 MOTION held UNDER SEAL. (ma) [93-5202] 8/20/93 MOTION held UNDER SEAL. (ma) [93-5202] 8/20/93 MOTION held UNDER SEAL. (ma) [93-5202] 8/25/93 ORDER (Clerk) held UNDER SEAL. (ma) [93-5202] 9/29/93 MOTION filed by American Committee for Interoperable Systems for leave to file brief amicus curiae. Certificate of Service dated 9/28/93. (ma) [93-5202] 10/1/93 BRIEF on behalf of Appellee Berkeley Software, Pages: 50, Copies: 10, Delivered by mail, filed. Certificate of Service date 10/1/93. See 8/25/93 Order. (jlb) [93-5202] 10/12/93 RESPONSE by Appellant, Unix Sys Lab Inc, in opposition to motion by American Committee for leave to file amicus curiae brief in support of Appellees, received. Certificate of Service dated 10/8/93. (ma) [93-5202] 10/15/93 REPLY from proposed amicus, American Committee for Interoperable Systems, to Appellant's opposition to motion for leave to file brief amicus curiae, received. Certificate of Service dated 10/14/93. (ma) [93-5202] 10/18/93 RESPONSE by Appellee Berkeley Software in support of motion by American Committee for Interoperaable Systems for leave to proceed as amicus curiae, received. Certificate of Service dated 10/15/93. (ma) [93-5202] Docket as of April 24, 2001 10:36 pm Page 11 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al 10/18/93 REPLY BRIEF on behalf of Appellant, Copies: 10, Delivered by mail, filed. Certificate of service date 10/18/93. (jlb) [93-5202] 10/22/93 LETTER RECEIVED from Counsel for Appellant dated 10/19/93 indicating that appendix attached to reply brief for convenience of court only. SEND TO MERITS PANEL (jlb) [93-5202] 10/25/93 WITHDRAW OF APPEARANCE: attorney Joel Linzner for Regents Univ CA, Martin A. Trow, Paul Hall, Carl J. Stoney, Jacques S. Yeager, Harold M. Williams, Dean A. Watkins, Yori Wada, Howard H. Leach, Leo S. Kolligian, Meredith J. Khachigian, S. Suenson Johnson, Jeremiah F. Hallisey, Alice J. Gonzales, Tirso Del Junco, Diana Darnell, Frank W. Clark, Glenn Campbell, Yvonne Brathwaite Burke, Clair W. Burgener, Roy T. Brophy, William T. Bagley, Gail G. Anderson, Ralph M. Ochoa, David P. Gardner, Bill Honig, Willie L. Brown, Leo T. McCarthy, Pete Wilson, S. Stephen Nakashima, and W. Elliot Browniee withdrawing appearance. (lld) [93-5202] 10/25/93 ZZ#PARTY ZZ#NOT ZZ#PARTICIPATING: Joel Linzner advises that Regents Univ CA, W. Elliot Browniee, S. Stephen Nakashima, Pete Wilson, Leo T. McCarthy, Willie L. Brown, Bill Honig, David P. Gardner, Ralph M. Ochoa, Gail G. Anderson, William T. Bagley, Roy T. Brophy, Clair W. Burgener, Yvonne Brathwaite Burke, Glenn Campbell, Frank W. Clark, Diana Darnell, Tirso Del Junco, Alice J. Gonzales, Jeremiah F. Hallisey, S. Suenson Meredith J. Khachigian, Leo S. Kolligian, Howard H. Leach, Yori Wada, Dean A. Watkins, Harold M. Williams, Jacques S. Yeager, Carl J. Stoney, Paul Hall, and Martin A. Trow, will not participate in this appeal, received. ZZ#[SEND ZZ#TO ZZ#MERITS ZZ#PANEL] (lld) [93-5202] 10/26/93 ORDER (ZZ_Greenberg, Circuit Judge) granting motion by American Committee for Interoperable Systems for leave to file brief amicus curiae in support of appellees, filed. (dlr) [93-5202] 10/26/93 AMICUS BRIEF on behalf of American Committee for Interoperable Systems. Pages: 16, Copies: 10, Delivered by mail, filed. Certificate of service date 9/28/93. See 10/26/93 Order. (jlb) [93-5202] 10/26/93 APPEARANCE from Attorney Peter M.C. Choy on behalf of Amicus-appellee Amer Comm, filed. (lld) [93-5202] 10/27/93 LETTER dated 10/26/93 received from Leslie A. Fithian, Esq., counsel for appellee, Berkeley Software, pursuant to Rule 28(j). (mgd) [93-5202] 12/15/93 CALENDARED for Friday, February 4, 1994. (wab) Docket as of April 24, 2001 10:36 pm Page 12 93-5202 Unix Sys Lab Inc v. Berkeley Software, et al [93-5202] 1/28/94 Letter faxed January 27, 1994 from Daniel L. Appelman, counsel for appellee, advising the court that both parties would like an adjournment in an effort to reach possible settlement. (pl) [93-5202] 2/4/94 MOTION filed by Appellant, Unix Sys Lab Inc, and Appellee, Berkeley Software, to dismiss appeal pursuant to FRAP 42(b). (ma) [93-5202] 2/4/94 ORDER (Greenberg, Authoring Judge, Roth, Circuit Judge, and Pollak, District Judge) granting motion to dismiss appeal pursuant to F.R.App.P. 42(b), filed. (ma) [93-5202] Docket as of April 24, 2001 10:36 pm Page 13