Federal Circuit Holds that a Patentee’s Disavowal of its Right to Appeal a Noninfringement Judgment in Federal Court Moots a Defendant’s Appeal of an IPR Involving the Same Claims

In ABS Global, Inc. v. Cytonome/ST, LLC (Fed. Cir. Jan. 6, 2021), the Federal Circuit held that a patent owner’s disavowal of its right to appeal a district court judgment of noninfringement prevented the alleged infringer from appealing a determination in an Inter Partes Review proceeding that certain claims, also at issue in the district court, were valid.  In particular, during an appeal of an IPR decision filed subsequent to the district court judgment, Cytonome, the patentee, expressly disclaimed any right to appeal the district court’s summary judgment decision and argued that ABS could not demonstrate any injury to pursue its appeal. ABS responded that the appeal should proceed because it had a new design and because of the history of lawsuits brought by Cytonome against ABS.

The Federal Circuit determined that mootness was the controlling issue and that the voluntary cessation doctrine governed the inquiry. Applied to the facts, the Federal Circuit evaluated: (1) whether Cytonome demonstrated that its challenged conduct was not reasonably expected to recur; and (2) whether ABS demonstrated that it was engaged in or had sufficiently concrete plans to engage in activities not covered by Cytonome's disavowal to establish injury. Finding in the negative on each of these inquiries, ABS's appeal was dismissed.

This is the link to the case -  http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2051.OPINION.1-6-2021_1712970.pdf