Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in ABS Global, Inc. v. Cytonome/ST, LLC, 19-2051 (Jan. 6, 2021), dismissing the appeal of an inter partes review (“IPR”) decision as moot in light of the voluntary cessation doctrine.
In 2017, Cytonome sued ABS for infringement of six patents, including U.S. Patent No. 8,529,161. ABS subsequently filed an IPR petition for review of all claims of the ’161 Patent, which was instituted. The Patent Trial and Appeal Board ultimately found some, but not all, claims of the ’161 Patent unpatentable. Later, the district court ruled on summary judgment that ABS’s accused products did not infringe any of the ’161 Patent’s claims. ABS appealed the IPR decision. In response to the IPR appeal, Cytonome submitted an affidavit stating that Cytonome “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,” which resulted in a final judgment of noninfringement.
In view of Cytonome’s affidavit, the Federal Circuit determined the case “presents an issue of mootness based on voluntary cessation.” The Federal Circuit looked to the Supreme Court’s framework in Already, LLC v. Nike, Inc., 568 U.S. 85 (2013), to determine whether one party’s voluntary cessation of litigation made the issues in an appeal moot. The Court concluded “that Cytonome’s disavowal of its right to appeal the district court’s noninfringement judgment mooted ABS’s appeal.” The Court explained: “Applying the voluntary cessation framework, we first conclude on this record that Cytonome has demonstrated that it cannot reasonably be expected to resume its enforcement efforts against ABS.” The Court concluded this demonstration by Cytonome shifted the burden to ABS to offer “any evidence of current activity or plans to engage in activity that would subject” it to infringement liability, such as the development of new products. Because ABS was unable to do so, the Court concluded the appeal should be dismissed as moot.
Finally, the Court denied a request to vacate the IPR ruling rather than dismiss the appeal because the vacatur request was untimely having been first raised during oral argument. Chief Judge Prost dissented-in-part, arguing that “that vacatur is in order when the prevailing party below unilaterally moots an appeal.”