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Controlling Your Own Destiny: Patent Owner Unilaterally Moots Appeal to Preserve Favorable PTAB Determination

| Brandon G. SmithJeremiah S. Helm, Ph.D.

ABS GLOBAL, INC. V. CYTONOME/ST, LLC

Before Prost, Moore, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary:  A patent owner may moot a petitioner’s appeal of an IPR final written decision of no unpatentability by declining to appeal a judgement of non-infringement in a litigation

In 2017, Cytonome sued ABS for infringement of U.S. Patent No. 8,529,161.  In response, ABS petitioned for inter partes review of the ’161 patent.  The PTAB issued a final written decision that invalidated some, but not all, of the challenged claims.  After the final written decision issued, the district court granted ABS’s motion for summary judgment of non-infringement.  ABS appealed the portion of the PTAB’s final written decision holding some claims not unpatentable.  In response, Cytonome filed a brief that included an affidavit disclaiming any appeal of the district court’s judgment of non-infringement of the ’161 patent, and argued ABS’s appeal was moot.

The Federal Circuit applied the doctrine of voluntary cessation, and agreed that Cytonome’s affidavit mooted ABS’s appeal.  The Court held Cytonome’s affidavit demonstrated the Cytonome could not reasonably be expected to resume its enforcement efforts.  Thus, the Federal Circuit held, there was no present injury in fact to ABS because ABS’s only alleged injury was the threat of infringement in the parallel district court proceeding.  Moreover, there was nothing in the record suggesting a substantial risk of future ABS infringement.  The Federal Circuit ruled that it was not enough for ABS to allege that Cytonome could conceivably reassert the ’161 patent against a future product, without concrete evidence of the existence of at least the development of that product.  Because Cytonome’s affidavit encompassed all of ABS’s allegedly unlawful conduct, and ABS did not rebut Cytonome’s showing that the Cytonome’s conduct was not reasonably expected to recur, the doctrine of voluntary cessation eliminated any case or controversy and mooted the IPR appeal.

The Federal Circuit rejected ABS’s argument that Fort James Corp. v. Solo Cup Co., 412 F.3d 1340 (Fed. Cir. 2005) created an exception to the mootness doctrine.  The Court held that Fort James stood for nothing more than the principle that a district court had the power to decide both questions posed in alternative grounds for relief when its decree was subject to review by a court of appeal.  Fort James was therefore inapplicable because no determination in the IPR proceeding could provide an alternative ground for judgment in the district court proceeding.

Editor: Paul Stewart