{"id":2929,"date":"2021-01-07T02:29:00","date_gmt":"2021-01-07T08:29:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2929"},"modified":"2021-01-23T21:25:43","modified_gmt":"2021-01-24T03:25:43","slug":"judgment-of-non-infringement-moots-appeal-of-ptab-decision-sustaining-validity","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2929","title":{"rendered":"Judgment of Non-Infringement Moots Appeal of PTAB Decision Sustaining Validity"},"content":{"rendered":"\n

In ABS Global, Inc. v. Cytonome\/St, LLC<\/a>, [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.<\/p>\n\n\n\n

Two weeks after the Board\u2019s final written decision, the district court granted in part ABS\u2019s motion for summary judgment, concluding that ABS\u2019s accused products did not infringe any of the \u2019161 patent claims. In June 2019, nearly two months after the district court\u2019s summary judgment decision, ABS appealed the Board\u2019s final written decision. Cytonome\u2019s response brief, filed about three months later, included an affidavit by Cytonome\u2019s counsel stating that Cytonome \u201chas elected not to pursue an appeal of the dis-trict court\u2019s finding of non-infringement as to the \u2019161 pa-tent and hereby disclaims such an appeal.\u201d Cytonome then argued that, because it disavowed its ability to challenge the district court\u2019s summary judgment that ABS did not infringe the \u2018161 patent claims, ABS lacked the requisite injury in fact required for Article III standing to appeal the Board\u2019s final written decision regarding validity of the claims of the \u2019161 patent.<\/p>\n\n\n\n

The Federal Circuit, applying the voluntary cessation doctrine, concluded that Cytonome\u2019s disavowal of its right to appeal the district court\u2019s noninfringement judgment mooted ABS\u2019s appeal of the IPR. The Federal Circuit first observed that Cytonome\u2019s assertion of the \u2019161 patent against ABS\u2014cannot reasonably be expected to recur. Although Cytonome\u2019s
affidavit disavowing its appeal is unquestionably narrower than a covenant not to sue, Cytonome\u2019s disavowal was \u201ccoextensive with the asserted injury\u201d in fact. The Federal Circuit said that Cytonome\u2019s disavowal estops Cytonome from asserting liability against ABS for infringement of the \u2019161 patent claims in connection with the accused products, thereby allowing ABS to make, use, and sell those products freely.<\/p>\n\n\n\n

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\u2019s IPR appeal is moot because there is no injury sufficient to support an ongoing case or controversy.<\/p>\n","protected":false},"excerpt":{"rendered":"

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 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[21],"tags":[],"class_list":["post-2929","post","type-post","status-publish","format-standard","hentry","category-ipr"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2929","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2929"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2929\/revisions"}],"predecessor-version":[{"id":2930,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2929\/revisions\/2930"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2929"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2929"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2929"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}