ABS Global, Inc. v. Cytonome/ST, LLC, Appeal No. 2019-2051 (Fed. Cir. Jan. 6, 2021)

For the second time in two weeks, our Case of the Week concerns issues relating to Article III justiciability of an appeal from an IPR proceeding. Last week we covered the issue of a petitioner’s standing to bring an appeal from a lost IPR. See our write-up of the General Electric v. Raytheon decision here. Standing, of course, concerns a party’s rights when the case (here, an appeal) is filed. This week, the case is about mootness—arising when the patent owner took steps to ameliorate concerns of infringement against the petitioner after the appeal was filed—invoking the voluntary cessation doctrine. The Federal Circuit held that the claim was moot.

Cytonome filed suit against ABS for infringement of the ’161 Patent in June 2017. ABS then petitioned for IPRs against the ’161 Patent. The Board instituted review and found certain claims invalid, but not others. Two weeks later, the district court granted summary judgment of noninfringement of any of the ’161 Patent claims. Two months later, in June 2019, ABS appealed the Board’s final written decision concerning the claims that were not found invalid in the IPRs. In November 2019, ABS filed its opening brief in the appeal from the IPR. Three months later, Cytonome filed its response brief. Attached to its response was an affidavit stating that it “has elected not to pursue an appeal of the district court’s finding of non-infringement as to the ’161 patent and hereby disclaims such an appeal.” Cytonome argued that, because it disavowed its ability to challenge the district court’s noninfringement decision, ABS lacked injury in fact, as required for standing to appeal a loss in an IPR proceeding.

Ultimately, the argument shifted from one of standing to one of mootness. But the Federal Circuit found them to be largely interchangeable concepts, quoting the Supreme Court’s decision in Friends of the Earth, Inc. v. Laidlaw Env’t Servs. (TOC), Inc., 528 U.S. 167, 190 (2000) for the phrase “Mootness can be described as the doctrine of standing set in a time frame: The requisite personal interest that must exist at the commencement of the litigation (standing) must continue throughout its existence (mootness).”

The Federal Circuit then assessed the case in light of the Supreme Court’s decision in Already, LLC v. Nike, Inc., 568 U.S. 85 (2013), which lays out the voluntary cessation doctrine. There, Nike dropped a trademark case and covenanted not to sue Already for accused products or “colorable imitations” thereof. The Supreme Court held that this mooted the case because there was no longer a potential injury suffered by Already.

Applying the same analysis here, the Federal Circuit found that Cytonome’s decision not to appeal the non-infringement decision from the district court mooted ABS’s IPR appeal. Although Cytonome’s affidavit was substantially narrower in scope than the covenant not to sue in Already, it was nonetheless “coextensive with the asserted injury in fact.”

The Court also considered ABS’s late attempt at oral argument to vacate the IPR decision. The Court found this attempt forfeited, and denied to order vacatur.

Judge Prost dissented only from this last decision. She would have held that vacatur was required under the Supreme Court’s decision in United States v. Munsingwear, Inc., 340 U.S. 36 (1950) and its progeny. According to Judge Prost, the Court has a duty of ordering vacatur when an appellee moots an appeal through unilateral action, as Cytonome did here.

A copy of the opinion can be here.

ALSO THIS WEEK

SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., Appeal No. 2019-2411 (Fed. Cir. Jan. 5, 2021)

In an appeal from a district court’s final judgment of infringement, willfulness, and damages, the Federal Circuit reversed, finding the patent not infringed based on a revised claim construction. The Court first addressed whether the claim term, which was in the first paragraph of the claim, but followed the word “comprising” in that paragraph, was part of the preamble. The Court concluded that it was not part of the preamble, but either way, was limiting. The court then concluded that the phrase “a plurality of” followed by a list using the conjunctive “and” before the last item in the list requires more than one of each of the items in the list. The district court had adopted a different construction, finding that the above construction would have “exclude[d an] embodiment[] disclosed in the specification,” in contravention to the Federal Circuit’s holding in Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276–77 (Fed. Cir. 2008).

The Federal Circuit rejected the district court’s interpretation and application of Oatey. The Court explained that while Oatey correctly stipulates a general reluctance to exclude an embodiment, such reluctance must not “outweigh the language of the claim.” Courts should not infer that all embodiments are included in a claim when there is probative evidence that indicates otherwise. Accordingly, the Court reversed the district court’s grant of summary judgment to SIMO and entered a judgment of non-infringement for uCloudlink, thus also undoing the willfulness and damages findings following a jury trial.

A copy of the opinion can be found here.