IP Law Daily Mootness doctrine applies when challenged conduct not reasonably expected to recur
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Wednesday, January 6, 2021

Mootness doctrine applies when challenged conduct not reasonably expected to recur

By Brian Craig, J.D.

Disavowal by the patent owner of the right to appeal the district court’s noninfringement judgment mooted the IPR appeal.

Concluding that no live case or controversy exists between the parties over a patent for microfluidic devices, the U.S. Court of Appeals for the Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board in an inter partes review (IPR) proceeding sustaining the patentability of certain claims. Because the patent assignee, Cytonome/ST, LLC, disavowed its ability to challenge a judgment by the district court’s finding of noninfringement in the parallel district court proceedings, the Federal Circuit concluded that the appeal is moot. The Federal Circuit also concluded that IPR challenger ABS Global, Inc. waived its request for vacatur by raising the issue for the first time at oral argument on appeal. Judge Sharon Prost wrote a dissenting opinion arguing that vacatur is in order when the prevailing party below unilaterally moots an appeal (ABS Global, Inc. v. Cytonome/ST, LLC, January 6, 2021, Stoll, K.).

Cytonome/ST, LLC ("Cyntonome") is the assignee of U.S. Patent No. 8,529,161 ("the ’161 patent"), directed to microfluidic devices and methods of configuring microfluidic systems. Cytonome filed a complaint against ABS in district court asserting infringement of claims of six patents, including the ’161 patent. Four months later, ABS filed a petition for inter partes review (IPR) of all claims of the ’161 patent. The Board concluded that ABS had failed to demonstrate that the remaining claims of the ’161 patent were unpatentable. The district court held a jury trial covering the patents remaining in the case in September 2019. The district court entered final judgment of noninfringement as to the ’161 patent claims. ABS appealed the Board’s final written decision in the Federal Circuit in November 2019. In its response brief, Cytonome’s counsel included an affidavit that Cytonome elected not to pursue an appeal of the district court’s finding of non-infringement as to the ’161 patent. Cytonome then argued that, because it disavowed its ability to challenge the district court’s summary judgment that ABS did not infringe the ‘161 patent claims, ABS lacked the requisite injury in fact to appeal the Board’s final written decision regarding validity of the claims of the ’161 patent.

Mootness. The Federal Circuit first concluded that the mootness doctrine applies where Cytonome demonstrated that its challenged conduct is not reasonably expected to recur. A case becomes moot when the issues presented are no longer live or the parties lack a legally cognizable interest in the outcome. Here, the Federal Circuit found that ABS failed to demonstrate that it is engaged in or has sufficiently concrete plans to engage in activities not covered by Cytonome’s disavowal. Cytonome demonstrated that its challenged conduct is not reasonably expected to recur. The Federal Circuit concluded that ABS’s IPR appeal is moot because there is no injury sufficient to support an ongoing case or controversy. The evidence in the record fails to establish that ABS had a particularized, concrete stake in the outcome of the IPR appeal. Accordingly, the Federal Circuit held that the appeal is moot.

Exception to mootness. The Federal Circuit also held that no exception to the mootness doctrine applies. ABS argued that an exception to mootness exists that arises in the context of patent law where a patent owner who strategically waits until after the resolution of its claim for patent infringement to offer a covenant not to sue and not to appeal. The Federal Circuit rejected this opportunistic approach argument and concluded that Cytonome demonstrated that there is no ongoing case or controversy with respect to ABS’s IPR appeal.

Vacatur. The Federal Circuit then concluded that ABS waived its request for vacatur by raising the issue for the first time at oral argument. ABS raised for the first time during oral argument that if the court finds the case moot, the proper disposition would include vacating the challenged portions of the Board’s decision. Instead, ABS waited over seven months to raise vacatur, requesting it for the first time at oral argument. The Federal Circuit cited cases from other circuits that a party waives its request for vacatur by raising it for the first time at oral argument. Because ABS failed to preserve it vacatur argument, the Federal Circuit exercised its discretion to find forfeiture and therefore denied the request. Accordingly, the Federal Circuit affirmed the Board’s decision.

Dissent. Judge Sharon Prost dissented from the majority’s opinion only on the vacatur issue. Judge Prost argued that vacatur is in order when the prevailing party below unilaterally moots an appeal. Because Cytonome took unilateral action to moot the appeal by disclaiming its district court appeal, the court should grant vacatur. Judge Prost argued that Cytonome obtained a favorable determination from the Board, took voluntary action to moot ABS’s appeal, and now will retain the benefit.

This case is No. 19-2051.

Attorneys: Steven J. Horowitz (Sidley Austin LLP) for ABS Global, Inc. Pratik A. Shah (Akin Gump Strauss Hauer & Feld LLP) for Cytonome/ST, LLC.

Companies: ABS Global, Inc.; Cytonome/ST, LLC

MainStory: TopStory Patent FedCirNews GCNNews

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