Ppg Industries, Inc. v. Valspar Sourcing, Inc., 679 F. App'x 1002

PPG requested inter partes reexaminations of two Valspar patents; PTAB issued final decisions adverse to PPG. PPG appealed to the Federal Circuit under pre‑AIA 35 U.S.C. §§ 141, 315.
At the time the reexaminations were initiated and decided, there was no pending district court litigation between the parties.
Evidence showed PPG had launched a commercial can‑interior coating and had received at least one customer inquiry indicating Valspar might sue—facts PPG relied on to show a concrete stake in the reexamination outcome.
Valspar maintained PPG lacked Article III standing to appeal but later filed an infringement suit on related patents in Minnesota.
While the appeal was pending, Valspar unilaterally executed a Covenant Not To Sue covering the two patents at issue as to PPG, its subsidiaries, and customers.
The Federal Circuit concluded PPG had standing to appeal but that Valspar’s covenant mooted the appeal; it vacated the PTAB decisions and dismissed the appeals.

Issue	Plaintiff's Argument (PPG)	Defendant's Argument (Valspar)	Held
Article III standing to appeal PTAB reexamination when no district case pending	PPG argued it had a particularized, concrete interest because it commercially made/sold accused product and received inquiries suggesting threat of suit	Valspar argued no live case or controversy existed when PPG appealed, so PPG lacked standing	Court held PPG had standing: commercial activity + threat of enforcement + estoppel risk gave a concrete stake (distinguishing Consumer Watchdog)
Mootness after unilateral Covenant Not To Sue by prevailing party	PPG argued the covenant was unilateral/tardy and should not moot the appeal or require vacatur of PTAB decisions	Valspar argued the covenant removed any future injury and thus mooted the appeal	Court held the covenant mooted the controversy; vacatur of PTAB decisions and dismissal appropriate to serve justice

Consumer Watchdog v. Wis. Alumni Rsch. Found., 753 F.3d 1258 (Fed. Cir. 2014) (standing standard for administrative patent appeals)
Summers v. Earth Island Inst., 555 U.S. 488 (2009) (injury‑in‑fact is an Article III requirement)
U.S. Bancorp Mortgage Co. v. Bonner Mall P’ship, 513 U.S. 18 (1994) (vacatur appropriate where mootness results from unilateral action of prevailing party)
Walling v. James V. Reuter, Inc., 321 U.S. 671 (1944) (court may dispose of moot judgments as justice requires)
United States v. Hamburg‑Amerikanische Packetfahrt‑Actien Gesellschaft, 239 U.S. 466 (1915) (vacatur where review impossible through no fault of petitioner)
Already, LLC v. Nike, Inc., 568 U.S. 85 (2013) (covenant not to sue can moot case when it forecloses conceivable future infringement scenarios)