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The United States Court of Appeals for the Federal Circuit recently granted a patentee’s request to dismiss an appeal of an inter partes review brought by an accused infringer, relying on the patentee’s voluntary resolution of litigation on the patent. Cir. Jan. 6, 2021), the panel set forth a framework for the specific circumstances under which a patentee can obtain such relief, explaining how a patent owner may moot such an appeal by expressly declining to appeal a district court judgement of non-infringement obtained by the petitioner. A. District Court Litigation and Inter Partes Review of Cytonome’s Patent
As is often the case, the parties before the Patent Trial and Appeal Board in the inter partes review were also involved in district court litigation on the patent. In June 2017, Cytonome and others filed a complaint asserting infringement of six patents, including U.S. Pat. No. 8,529,161, which is assigned to Cytonome. The ’161 patent at issue is directed to devices and methods for microfluidic systems; defendant ABS was accused of infringing the patent in its cattle breeding business. In October 2017, ABS filed a petition for inter partes review of all claims of the ’161 patent. The Board instituted review and in April 2019 issued its final written decision, finding some claims of the ’161 patent invalid but also that ABS had failed to carry its burden to demonstrate that other claims were unpatentable. By the time the final written decision issued, summary judgment motions were pending in the district court action, and indeed two weeks later the district court granted summary judgment that the accused ABS products did not infringe any of the ’161 patent claims. Then, in June 2019, ABS filed its notice of appeal of the Board’s decision to the Federal Circuit, seeking to reverse the finding that it had failed to show the remaining claims to be unpatentable. B. The Federal Circuit Finds No Applicable Exception to Mootness and Applies the Voluntary Cessation Doctrine from the Supreme Court’s Already Opinion
In November 2019, ABS filed its opening brief on appeal. In its February 2020 response brief, Cytonome argued that ABS lacked Article III standing to appeal the Board’s decision. In support of that contention, Cytonome included an affidavit by counsel 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.”  ABS Global, 984 F.3d at 1019. The brief argued that Cytonome’s disavowal removed the requisite injury in fact required for Article III standing. And specifically, Cytonome argued that in order to maintain its appeal, ABS needed to—but could not—demonstrate a basis to conclude that ABS remains at substantial risk of enforcement of the ’161 patent claims. ABS’s reply brief argued that jurisdiction should be analyzed under the jurisprudence of mootness, not standing, and that the Federal Circuit recognizes a purported exception to the mootness doctrine for patent actions. The Federal Circuit agreed with ABS’s argument that mootness provides the correct framework to evaluate jurisdiction, but did not agree that there is any applicable exception. As to the proper framework, the Court of Appeals cited to the Supreme Court’s explanation that “[M]ootness 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).”  Id. at 1021 n. 1 (quoting Friends of the Earth, Inc. v. Laidlaw Env’t Servs. (TOC), Inc., 528 U.S. 167, 189 (2000)). Understood that way, the question raised by Cytonome was not one of standing, but whether the voluntary cessation doctrine applied to render moot ABS’s appeal. The Court of Appeals looked to Already, LLC v. Nike, Inc., 568 U.S. 85 (2013), for the law on voluntary cessation in the context of competing claims of infringement and invalidity. That case involved Nike’s allegations of trademark infringement and Already’s counterclaims of invalidity. Nike sought to dismiss the entire case, including Already’s counterclaims, by voluntarily issuing a broad covenant not to sue. But Already argued this was not sufficient at least because its future products could again be threatened under Nike’s trademark rights. As noted by the Federal Circuit, the Supreme Court set forth that in such circumstances the voluntary cessation doctrine places the initial burden on Nike, as the rights-holder, to show that it “could not reasonably be expected” to resume enforcement efforts against Already, the accused infringer. Where that initial burden is met by a covenant not to sue that covers all the alleged infringing conduct, the accused infringer then bears the burden to counter that it has engaged or has concrete plans to engage in activities not covered by the granted covenant. In Already, the Supreme Court held Nike had met its initial burden and Already had not met its counter-burden, and therefore the case was moot. As to the alleged exception to mootness in the context of patent law urged by ABS, the Court of Appeal found no such rule in its jurisprudence. Id. at 1026. Accordingly, the Court of Appeals applied the voluntary cessation doctrine as set forth in Already to the patent dispute in this case. C. Finding Cytonome Met Its Burden While ABS Failed to Meet Its Counter-Burden, the Federal Circuit Dismissed the Appeal as Moot
Applying the voluntary cessation doctrine, the Federal Circuit held that Cytonome’s disavowal of an appeal of the district court’s summary judgment of non-infringement was sufficient to meet the initial burden to show its efforts to enforce the ’161 patent against ABS could not reasonably be expected to resume. In reaching this result, the Court of Appeal stated that “Cytonome’s disavowal of its right to appeal effectively made final the district court’s judgment of noninfringement.”  ABS Global, 984 F.3d at 1022. Under the Federal Circuit’s preclusion jurisprudence, and specifically under the Kessler doctrine, a final judgment of no infringement confers on the accused products the status of  “noninfringing devices” which bars the future assertion of the same patent against future activity based on these noninfringing products or any products that are “essentially the same.”  Id. In light of that law, Cytonome’s disavowal effectively estopped any future enforcement against ABS for infringement of the ’161 patent claims based on the same or similar products. Hence, Cytonome met its initial burden to show its efforts to enforce the ’161 patent against ABS could not reasonably be expected to resume. Turning then to ABS’s opportunity to present contrary evidence that it reasonably expected Cytonome to sue again for infringement of the ’161 patent, or that ABS engaged in or had concrete plans to engage in activities not covered by Cytonome’s disavowal, the Federal Circuit noted the absence of any such evidence in the record. Accordingly, the Court of Appeal dismissed the appeal as moot (though Chief Judge Prost filed an opinion dissenting in part on the grounds that the proper disposition should be vacatur of the challenged portions of the Board’s decision). Id. at 1028. D. Conclusions
This precedential decision confirms that the voluntary cessation doctrine applies in the context of an appeal of a final written decision from inter partes review. By relying on the Supreme Court’s exegesis of the doctrine in the trademark case Already, and confirming the affidavit submitted by Cytonome in this case to be sufficient, at least for the appellee’s initial burden, the Federal Circuit provided guidance to future litigants to obtain similar relief. The analysis also suggests that accused infringers may face a substantial hurdle in coming forth with contrary evidence that they are engaged in or have concrete plans to engage in activities not covered by the scope of disavowal of allegations of infringement.

Noted with Interest: Federal Circuit Grants Patentee Dismissal of IPR Appeal Under the Voluntary Cessation Doctrine

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In  ABS Global, Inc. v. Cytonome/St, LLC , [2019-2051] (January 6, 2021), the Federal Circuit dismissed the appeal of a PTAB decision in an Inter Partes Review, sustaining the patentability of certain claims of U.S. Patent No. 8,529,161, finding that it was unlikely that the ‘161 patent would be asserted against the petitioner in the future. Two weeks after the Board’s final written decision, the district court granted in part ABS’s motion for summary judgment, concluding that ABS’s accused products did not infringe any of the ’161 patent claims. In June 2019, nearly two months after the district court’s summary judgment decision, ABS appealed the Board’s final written decision. Cytonome’s response brief, filed about three months later, included an affidavit by Cytonome’s counsel 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.” 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 required for Article III standing to appeal the Board’s final written decision regarding validity of the claims of the ’161 patent. The Federal Circuit, applying the voluntary cessation doctrine, concluded that Cytonome’s disavowal of its right to appeal the district court’s noninfringement judgment mooted ABS’s appeal of the IPR. The Federal Circuit first observed that Cytonome’s assertion of the ’161 patent against ABS cannot reasonably be expected to recur. Although Cytonome’s affidavit disavowing its appeal is unquestionably narrower than a covenant not to sue, Cytonome’s disavowal was “coextensive with the asserted injury” in fact. The Federal Circuit said that Cytonome’s disavowal estops Cytonome from asserting liability against ABS for infringement of the ’161 patent claims in connection with the accused products, thereby allowing ABS to make, use, and sell those products freely. The Federal Circuit found that because Cytonome has demonstrated that its disavowal encompasses all of its allegedly unlawful conduct, it was incumbent on ABS to indicate that it engages in or has sufficiently concrete plans to engage in activities not covered by the disavowal. The Federal Circuit concluded that ABS’s IPR appeal is moot because there is no injury sufficient to support an ongoing case or controversy.

Judgment of Non-Infringement Moots Appeal of PTAB Decision Sustaining Validity

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In a recent precedential opinion, ABS Global Inc. v. Cytonome/ST, LLC, 984 F.3d 1017 (Fed. Cir. 2021), the Federal Circuit held that the disclaimer of a right to appeal a district court’s summary judgment of non-infringement mooted a petitioner’s appeal of the Patent Trial and Appeal Board’s (PTAB) final written decision in an inter partes review (IPR) proceeding. In 2017, Cytonome sued ABS alleging infringement of Cytonome’s ‘161 Patent. Several months later, ABS filed a petition for inter partes review of all claims of the ‘161 Patent. After instituting review, the PTAB issued a final written decision invalidating some, but notably not all, claims of the ‘161 Patent. Thereafter, in the district court litigation, the court granted ABS’s motion for summary judgment of non-infringement of the ‘161 Patent. About two months later, ABS appealed the PTAB’s final written decision and filed its opening brief in support thereof. Next, Cytonome filed a response brief, which included an affidavit from Cytonome’s counsel 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.” The issue before the Federal Circuit, as raised by Cytonome in its response brief, was whether its disclaimer of its right to appeal the district court’s summary judgment non-infringement ruling mooted ABS’s appeal of the PTAB’s final written decision. Applying the voluntary cessation doctrine, the Federal Circuit considered (a) whether Cytonome had demonstrated that its challenged conduct was not reasonably expected to recur in view of its infringement disclaimer, and, if so, (b) whether ABS had demonstrated that it was engaged in or had sufficiently concrete plans to engage in activities not covered by Cytonome’s infringement disclaimer. With respect to Cytonome’s burden under (a), the Federal Circuit found Cytonome had demonstrated that it could not reasonably be expected to resume its enforcement efforts against ABS because the district court’s summary judgment of non-infringement removed ABS’s alleged injury in fact, and Cytonome’s disclaimer was “coextensive with the asserted injury in fact.” [1] In particular, the Federal Circuit found that Cytonome’s disclaimer effectively made final the district court’s summary judgment of non-infringement in view of the fact that Cytonome is barred from reasserting that ABS infringes the same claims again. [2] In short, the Federal Circuit found that Cytonome had demonstrated that it could not reasonably be expected to resume its enforcement efforts against ABS because Cytonome’s disclaimer estopped it from asserting infringement of the ‘161 Patent against ABS in connection with ABS’s accused products or any other ABS products that are “essentially the same.” [3]
Regarding ABS’s burden under (b), the Federal Circuit found that ABS had failed to demonstrate any evidence that it “engaged in or had concrete plans to engage in activities” outside the scope of Cytonome’s disclaimer. [4] In so finding, the court cited ABS’s admission that it was not facing any “specific threat” of liability with respect to the ‘161 Patent, rejecting ABS’s argument that Cytonome’s prior litigation history of suing ABS on another patent across multiple cases exposed ABS to continued infringement liability. [5] Specifically, the court noted that ABS’s general fear of infringement from Cytonome did not stem from Cytonome’s original assertion of the ‘161 Patent and that the chance that Cytonome’s behavior could “conceivably recur” did not rise to the requisite level of “reasonably be[ing] expected to recur” in view of ABS’s failure to show concrete plans for future activity that would create a substantial risk of future infringement liability. [6]
In light of this precedential Federal Circuit decision, parties to an IPR should remain cognizant of the fact that the patent owner effectively controls its own destiny and may unilaterally use an infringement disclaimer in a parallel district court action to moot a challenger’s appeal of an IPR final written decision. This ability could prove very useful for a patent owner seeking to preserve a favorable (or at least partially favorable) IPR final written decision, while the appellant/challenger may be able to avoid such a result by showing concrete plans to engage in activities outside the scope of the infringement disclaimer. [1] ABS Glob., Inc. v. Cytonome/ST, LLC, 984 F.3d 1017, 1021–22 (Fed. Cir. 2021). [2] Id. at 1022.

Use of Infringement Disclaimer to Preserve Favorable PTAB Decision

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Grammar School: District Court Erred in Departing from Claim Language to Adopt Construction that Encompassed All Disclosed Embodiments
In Simo Holdings Inc. v. Hong Kong Ucloudlink Network , Appeal No.19-2411, the Federal Circuit held that a claim construction that excludes an embodiment disclosed in the specification is proper where the claim language and intrinsic evidence sufficiently indicate that the disclosed embodiment is not within the scope of the claim. SIMO Holdings Inc. (SIMO) sued Hong Kong uCloudlink Network (uCloudlink) for patent infringement, asserting claims directed to apparatuses and methods for reducing roaming charges on cellular networks. The parties cross-moved for summary judgment on infringement. The district court granted summary judgment of infringement and denied uCloudlink’s cross-motion based on its conclusion that one of the device components recited in the claims (a “non-local calls database”) was not required to establish infringement. The district court reasoned that the contrary construction advanced by uCloudlink “although grammatically appealing, would contradict the specification,” which characterized the non-local calls database as an optional component of the invention. Following a jury determination that infringement had been willful, the district court entered a final judgment awarding SIMO $8.2 million in damages. uCloudlink appealed. The Federal Circuit reversed the summary judgment rulings, concluding that the district court erred in its claim construction. The Federal Circuit explained that the district court’s construction departed from traditional principles of grammar and was based on a misunderstanding of Federal Circuit precedent. While construing claims to encompass disclosed embodiments is generally favored, the Federal Circuit emphasized that this rule is not absolute and must give way where the claim language and intrinsic evidence demonstrate that a particular embodiment is excluded from the scope of the claim. The Federal Circuit determined that, under the correct claim construction, uCloudlink was entitled to summary judgment of noninfringement. The Federal Circuit rejected SIMO’s request for remand, finding that SIMO had failed to identify a triable issue of fact with respect to infringement. Controlling Your Own Destiny: Patent Owner Unilaterally Moots Appeal to Preserve Favorable PTAB Determination
In Abs Global, Inc. v. Cytonome/St, LLC ., Appeal No. 19-205, the Federal Circuit held that 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 the product was at least in development. Because Cytonome’s affidavit encompassed all of ABS’s allegedly unlawful conduct, and because ABS did not rebut Cytonome’s showing that the Cytonome’s conduct was not reasonably likely 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. No Kitchen Confusion: When Comparing Marks, The Trademark Board Can Give Less Weight To Shared Terms If The Terms Are Suggestive Or Descriptive
In Quiktrip West, Inc. v. Weigel Stores, Inc. ,Appeal No. 20-1304, the Federal Circuit held that when comparing marks under the Dupont factors, the Board may give less weight to shared terms that are highly suggestive if not descriptive. Further, a party’s willingness to alter its mark multiple times to prevent customer confusion demonstrates a lack of bad faith. In 2014, Weigel Stores, Inc. began using the stylized mark W KITCHENS in connection with food and beverages sold in its stores. The mark as originally used by Weigel appeared as follows:
QuikTrip West, Inc. sent Weigel a cease and desist letter requesting that Weigel cease using the W KITCHENS mark on the basis that it was confusingly similar to QuikTrip’s registered QT KITCHENS mark, shown below:
In response, Weigel modified its mark twice before applying to register the third and final iteration of its mark, shown below:
QuikTrip then filed an opposition to Weigel’s mark under 15 U.S.C. § 1052(d), alleging that it would create a likelihood of confusion with its QT KITCHENS mark. The Board dismissed QuikTrip’s opposition, finding that there was no likelihood of confusion under the DuPont factors. QuikTrip appealed. On appeal, QuikTrip challenged the Board’s analysis of two DuPont factors: the similarity of the marks and Weigel’s alleged bad faith. Regarding the similarity of the marks, the Federal Circuit found that the Board properly determined that, when comparing the marks, it should give less weight to the shared term KITCHEN(S) because “kitchen” is a highly suggestive if not descriptive word. Further, the Board correctly gave more weight to the dominant, distinct portions of the marks, namely, Weigel’s encircled W and QuikTrip’s QT. Regarding Weigel’s alleged bad faith, QuikTrip argued that the Board failed to meaningfully consider evidence of Weigel’s intentional copying of elements of QuikTrip’s mark, including Weigel’s alleged photographing of QuikTrip’s stores and its review of QuikTrip’s marketing materials. In response, Weigel argued that its willingness to alter its mark multiple times to prevent customer confusion should negate any inference of bad faith. Both the Board and the Federal Circuit agreed with Weigel and the Federal Circuit affirmed the decision of the Board.

Federal Circuit Review - January 2021

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285-1. Federal Circuit Reverses District Court's Construction of Preamble of Claim and Holds Non-Infringement by Hong Kong-based Mobile Technology Company
The United States Court of Appeals for the Federal Circuit recently reversed a summary judgment holding from the United States District Court for the Southern District of New York that found uCloudlink infringed a patent of SIMO Holdings Inc. See SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech., No. LEXIS 137 (Fed. Cir. Jan. 5, 2021) (Before O'Malley, Wallach, and Taranto, Circuit Judges) (Opinion for the Court, Taranto, Circuit Judge). SIMO Holdings Inc. (SIMO) is the owner of U.S. Patent No. 9,736,689 (the '689 patent) directed to "apparatuses and methods that allow individuals to reduce roaming charges on cellular networks when traveling outside their home territory." SIMO sued Hong Kong uCloudlink Network Technology Limited and uCloudlink (America), Ltd. (collectively, uCloudlink) alleging that several products of uCloudlink infringed the '689 patent. The district court granted summary judgment to SIMO on infringement, reasoning that Claim 8 did not require a non-local calls database as recited in the preamble of Claim 8, and accordingly that uCloudlink's products met each limitation of Claim 8. Subsequently, uCloudlink appealed. On appeal, the Federal Circuit primarily examined construction of the preamble of Claim 8 by the district court. The preamble of Claim 8 recites "[a] wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local cells database, at least one of the plurality of programs stored in the memory comprises instructions executable by at least one of the plurality of processors . . . ." (emphasis added). The Federal Circuit first agreed with the district court that the preamble of Claim 8 is limiting such that infringement of Claim 8 requires that the accused products practice each limitation of the preamble either through literal infringement or under the doctrine of equivalents. The Federal Circuit explained that Claim 8 is an apparatus claim and the preamble is the only portion of the claim that "identifies physical components of the claimed physical device" whereas the body of the claim only provides functional characteristics of the claimed physical device. Next, the Federal Circuit explained that the primary issue is whether the language of the preamble requires a plurality of non-local cells databases. The district court construed "a plurality of" to require "at least two" elements of the entire list of identified items in the preamble (i.e., memory, processors, programs, etc.). However, the Federal Circuit disagreed. The Federal Circuit pointed to its holding in SuperGuide Corporation v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004) as guidance. In such case, the Federal Circuit found that the phrase "at least one of" followed by a list of items connected by the conjunction "and" meant that there had to be at least one or more of each item of such list. Here, the Federal Circuit extended such principle by holding that "a plurality of" followed by a list of items connected by the conjunction "and" should be construed to require two or more of each item of such list. The Federal Circuit further noted that there is no article in front of "non-local calls database," thereby supporting extending the SuperGuide principle in this instance. Additionally, the Federal Circuit explained that the use of "the plurality" in the preamble following "non-local calls database" in the phrases "at least one of the plurality of programs . . ." and "at least one of the plurality of processors . . ." again indicates that "the plurality of" followed by the list of items must be construed such that "the plurality" applies individually to each item in the list. Lastly, the Federal Circuit explained that although the specification indicated that a "non-local calls database" is optional, every claim does not have to be interpreted to cover all embodiments and, here, the text of the claim makes it clear that Claim 8 is not intended to cover embodiments that do not require a non-local calls database. PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). The Federal Circuit further noted that the '689 patent includes other independent claims that cover embodiments that do not require a non-local calls database. Ultimately, the Federal Circuit reversed the district court's summary judgment of infringement by uCloudlink of the '689 patent and concluded that the preamble of Claim 8 requires "a plurality of" each component of "memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local cells database." Because SIMO did not present any evidence that established a triable issue of fact regarding whether the accused products of uCloudlink include a non-local cells database, the Federal Circuit concluded that uCloudlink was entitled to summary judgment of noninfringement and no remand was necessary. A claim that includes the phrase "a plurality of" followed by a list of items connected by "and" requires that there be a plurality of each item in the list. Even when the specification of the patent identifies an element in the list as optional, such construction of the phrase "a plurality of" still applies when the text of the claim dictates such construction. The mere fact that there is an alternative embodiment disclosed in the specification that is not within the scope of construction of an asserted claim does not outweigh the language of the claim, particularly when the construction of the asserted claim is based on intrinsic evidence. 285-2. Federal Circuit Opines on Mootness Due to the Voluntary Cessation Doctrine and Dismisses Appeal as Moot
The United States Court of Appeals for the Federal Circuit recently dismissed ABS Global's appeal from the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), finding its appeal moot because ABS had not established that its activity would place it at substantial risk of infringement of a patent owned by Cytonome. ABS Glob., Inc. v. Cytonome/ST, LLC, No. 2019-2051, 2021 U.S. App. LEXIS 275 (Fed. Cir. Jan. 6, 2021) (Before Prost, Chief Judge, Moore and Stoll, Circuit Judges). Cytonome is the assignee of US Patent No. 8,529,161, (the '161 patent) which is directed to microfluidic devices and methods of configuring microfluidic systems. In June of 2017 Cytonome filed a complaint against ABS and others in district court asserting infringement of claims of six patents, including the '161 patent. ABS later filed a petition for inter partes review (IPR). The PTAB instituted an IPR and subsequently issued a final written decision that invalidated some claims of the '161 patent. The PTAB concluded that ABS failed to show that the remaining claims of the '161 patent were unpatentable. Several weeks after the PTAB decision, the district court granted ABS's motion for summary judgment, holding that ABS's accused products did not infringe any of the '161 patent's claims. ABS appealed the PTAB judgment. During the appeal, Cytonome filed an affidavit stating that Cytonome had "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 presented arguments that its affidavit resulted in ABS lacking standing to appeal the PTAB's decision regarding the validity of the '161 patent, because the disavowal resulted in ABS lacking the requisite injury in fact to support an appeal. The Federal Circuit initially noted that standing was the incorrect doctrine to be applied to the mootness question inquiry raised by Cytonome regarding the ABS appeal. Rather, the voluntary cessation doctrine governed the mootness inquiry in this case. The Federal Circuit found that Cytonome's affidavit was sufficient to shift the burden to ABS to offer evidence of current activity or future plans that would subject ABS to infringement liability under the '161 patent. The court found the evidence presented by ABS to be insufficient to meet the voluntary cessation standard of whether the wrongful behavior could reasonably be expected to recur. The Federal Circuit also rejected ABS's primary argument that the PTAB appeal was not moot based on an exception to mootness found in Fort James Corp. v. Solo Cup Co. The exception described in Fort James is patent law specific—a patent owner who strategically waits until after the resolution of its claim for patent infringement to offer a covenant not to sue or appeal does not moot a challenge to the patent's validity. The Federal Circuit noted that the holdings of Fort James applied to mooting counterclaims of unenforceability within the same proceeding, rather than assessing mootness in the context of parallel proceedings. Accordingly, the Federal Circuit rejected ABS's claim that the resolution of infringement claims in a first proceeding would give rise to an exception to the mootness of claims in a second separate proceeding. Additionally, the majority concluded that because ABS did not timely request vacatur it failed to preserve the right to request vacating the challenged portions of the PTAB decision. Chief Judge Prost dissented from the majority view, explaining that vacatur avoids the unfairness present when the prevailing party below unilaterally moots an appeal. While the majority held that ABS forfeited the vacatur argument, Prost explained that dismissal without vacatur deprived ABS of appellate review through no fault of its own. A plaintiff's unilateral disavowal of a right to appeal a finding of non-infringement of a patent may moot the defendant's appeal of a decision regarding invalidity of the same patent under the voluntary cessation doctrine.

Federal Circuit Review - Issue 285

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