Versata Software, Inc. v. Callidus Software, Inc.
780 F.3d 1134
| Fed. Cir. | 2015Background
- This is an interlocutory appeal arising from a district-court dispute about staying proceedings pending post‑grant review of asserted patents under the PTO’s CBM program.
- This court issued an opinion on November 20, 2014, reversing the district court’s denial of a stay.
- The parties, however, had filed a joint, unconditional stipulation of dismissal of the underlying complaint in district court under FRCP 41(a)(1)(A)(ii) late on November 19, 2014.
- Because a 41(a)(1)(A)(ii) stipulation effects automatic dismissal without district-court action, the case became moot before this court’s opinion issued.
- The panel stayed issuance of the mandate, solicited responses about whether to vacate its opinion, and concluded the appeal was moot at the time the opinion issued.
- The court vacated its November 20 opinion, dismissed the appeal, lifted the mandate stay, and ordered each side to bear its own costs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the appeal remained justiciable after the parties filed a joint stipulation of dismissal under FRCP 41(a)(1)(A)(ii) | The appeal was not moot because relief (stay) remained meaningful until mandate | The stipulation effected automatic dismissal, mooting the controversy before opinion issued | The stipulation automatically dismissed the case before the opinion issued; appeal was moot |
| Whether an appellate opinion issued after mooting event should be vacated | Vacatur unnecessary because decision on merits valid | Vacatur appropriate when mooting event precedes issuance of opinion | Court vacated its prior opinion because mootness existed before issuance |
| What law governs the procedural effect of the stipulation | Federal Circuit law controls all issues | Regional circuit law applies to procedural issues not unique to patents | Applied regional‑circuit law to determine effect of FRCP 41 dismissal (automatic effect) |
| Duty to notify the court of settlement or mooting events | Parties may delay notification without prejudice | Parties must promptly inform the court when a case may be moot | Court stressed counsel’s duty to bring mootness facts to the tribunal without delay |
Key Cases Cited
- Armster v. U.S. Dist. Court for Cent. Dist. of Cal., 806 F.2d 1347 (9th Cir. 1986) (distinguishing mootness before decision from mootness after decision and explaining limits on appellate authority to decide moot cases)
- Steffel v. Thompson, 415 U.S. 452 (U.S. 1974) (case-or-controversy requirement must exist at all stages, including appellate review)
- First Nat’l Bank v. Marine City, Inc., 411 F.2d 674 (3d Cir. 1969) (a stipulation under FRCP 41(a)(1)(A) effects automatic dismissal without judicial approval)
- In re Bath & Kitchen Fixtures Antitrust Litig., 535 F.3d 161 (3d Cir. 2008) (clarifying that a 41(a)(1)(A)(i) filing is a notice with automatic effect)
- In re Pattullo, 271 F.3d 898 (9th Cir. 2001) (vacating an appellate disposition when the case became moot shortly before issuance)