Support IPWatchdog with an individual sponsorship: Click here
“This court has previously recognized that even in the absence of a request to vacate an opinion, granting a motion to dismiss ‘at this stage, days before issuance of a mandate, . . .is neither required nor a proper use of the judicial system.’” – CAFC order
The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a short precedential order yesterday denying a request by Cisco Systems, Inc. and Hewlett Packard Enterprise Co. to voluntarily dismiss their appeal of a Patent Trial and Appeal Board (PTAB) ruling for K. Mizra LLC.
The CAFC issued the nonprecedential opinion in August 2024, ultimately vacating the PTAB’s determination that Cisco failed to show a motivation to combine a pair of prior art references in its attempt to prove K.Mizra’s challenged patent claims were obvious. The underlying inter partes review (IPR) related to K.Mizra’s U.S. Patent No. 8234705, titled Contagion Isolation and Inoculation.
On appeal, the Federal Circuit found that the PTAB’s obviousness analysis failed to reflect the flexibility required by the U.S. Supreme Court in its seminal 2007 decision in KSR International v. Teleflex. KSR requires that there be a motivation to combine prior art references in order to invalidate patent claims for obviousness, and such motivation is typically found in a benefit recognized by a skilled artisan to combine those references. However, the Federal Circuit’s 2023 decision in Intel v. PACT XPP Schweiz established that parties seeking to invalidate patent claims are not categorically required to show an improvement or benefit to prove that a skilled artisan would have a motivation to combine references.
By failing to address whether Cisco showed a motivation to combine in its non-benefits-based rationales, the PTAB committed legal error requiring the Federal Circuit to vacate and remand the IPR rulings.
According to Tuesday’s order, however, Cisco and Hewlett-Packard subsequently requested dismissal of the appeal due to a settlement and the CAFC delayed the issuance of its mandate in the case on October 9, 2024. The court then invited the U.S. Patent and Trademark Office (USPTO) to comment on what the court should do, and the USPTO requested the CAFC deny the motions “because this court has already entered its opinion and judgment and denied rehearing.”
Agreeing with the USPTO, the CAFC’s order, quoting TiVo Inc. v. EchoStar Corp., 429 F. App’x 975, 976 (Fed. Cir. 2011) (en banc), said:
“This court has previously recognized that even in the absence of a request to vacate an opinion, granting a motion to dismiss ‘at this stage, days before issuance of a mandate, . . . which would result in a modification or vacatur of our [] judgment, is neither required nor a proper use of the judicial system.’”
The order added that appeals from the PTAB “warrant additional consideration of the Director’s unconditional right to intervene,” which is “yet another reason that generally counsels against granting a motion to dismiss an appeal from the Board after this court has already decided the appeal.”
The parties are, however, free to request dismissal at the PTAB once the case is remanded, concluded the order.
Image Source: Deposit Photos
Author: NiceIdeas
Image ID: 421287828
