984 F.3d 1017
Fed. Cir.2021Background
- Cytonome owns U.S. Patent No. 8,529,161; ABS petitioned for inter partes review (IPR) of the patent; the PTAB invalidated some claims but sustained others.
- In parallel district litigation, the district court granted summary judgment that ABS’s accused products do not infringe the ’161 patent; Cytonome later obtained final judgment of noninfringement.
- ABS appealed the Board’s final written decision on validity. In its response brief in the Federal Circuit, Cytonome’s counsel filed an affidavit disclaiming any appeal of the district court’s noninfringement ruling (i.e., disavowing future enforcement/appeal as to the ’161 patent).
- The Federal Circuit analyzed whether Cytonome’s unilateral disavowal mooted ABS’s IPR appeal under the voluntary-cessation doctrine (guided by Already v. Nike) and whether ABS had evidence of concrete plans that would expose it to future infringement suits on the ’161 patent.
- The court concluded Cytonome’s disavowal was coextensive with ABS’s asserted injury, Cytonome met the burden to show the conduct is unlikely to recur, and ABS failed to show concrete plans or activity outside the disavowal; the appeal was dismissed as moot.
- ABS’s late request for vacatur of the PTAB decision was denied by the majority as forfeited; Chief Judge Prost dissented as to vacatur, arguing Munsingwear principles required vacatur when an appellee unilaterally moots an appeal.
Issues
| Issue | Plaintiff's Argument (Cytonome) | Defendant's Argument (ABS) | Held |
|---|---|---|---|
| Whether ABS’s IPR appeal is moot because Cytonome disavowed appealing the district court noninfringement decision | Disavowal removes injury in fact; ABS lacks Article III standing to pursue validity appeal | Standing existed when appeal filed; mootness (not standing) is the right framework; Fort James exception applies | Appeal moot under voluntary cessation; disavowal coextensive with asserted injury; dismissed |
| Who bears burdens under voluntary-cessation doctrine | Cytonome: must show challenged conduct won’t reasonably recur | ABS: must show mootness exception or ongoing risk | Court: Cytonome met initial burden; ABS failed to rebut with evidence of concrete, non-disavowed plans |
| Applicability of Fort James (patent-specific mootness exception) | Fort James not applicable here; it concerned issues within the same proceeding | Fort James creates exception when patentee waits to covenant not to sue after resolving infringement | Court rejected broad application of Fort James; limited to same-proceeding context |
| Remedy — whether vacatur of PTAB decision is required | Cytonome opposed vacatur | ABS: vacatur appropriate because appellee unilaterally mooted appeal; preserves ability to relitigate | Majority: vacatur request forfeited (denied); dissent: vacatur required under Munsingwear principles |
Key Cases Cited
- Already, LLC v. Nike, Inc., 568 U.S. 85 (2013) (voluntary-cessation framework; defendant bears burden to show challenged conduct cannot reasonably be expected to recur; covenant analysis)
- Friends of the Earth, Inc. v. Laidlaw Env’t Servs., 528 U.S. 167 (2000) (mootness and burden for voluntary cessation)
- Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014) (Kessler doctrine and preclusion effects of a final noninfringement judgment)
- Fort James Corp. v. Solo Cup Co., 412 F.3d 1340 (Fed. Cir. 2005) (post-verdict covenant addressed within same proceeding; limited application)
- United States v. Munsingwear, Inc., 340 U.S. 36 (1950) (vacatur of lower-court judgments when appeals are mooted)
- Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83 (1993) (court may decide alternative grounds; context for post-judgment issues)
- AVX Corp. v. Presidio Components, Inc., 923 F.3d 1357 (Fed. Cir. 2019) (prior litigation history alone insufficient to make risk of future suit concrete)