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Federal Circuit Remands for Decision on Vacatur Motion

January 04, 2011
Emsley, Rachel L.

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Last Month at the Federal Circuit - February 2011

Judges: Rader (author), Newman (additional views), Moore (concurring)

[Appealed from: E.D. Tex., Judge Clark]

In Ohio Willow Wood Co. v. Thermo-Ply, Inc., Nos. 10-1119, -1269 (Fed. Cir. Jan. 4, 2011), the Federal Circuit granted the parties’ joint motion for remand of the appeals for the limited purpose of allowing the district court to address the parties’ motion for vacatur.  The Federal Circuit, however, retained jurisdiction over the appeals so that the parties could seek appellate review within thirty days of the district court’s decision on remand.  Accordingly, the appeals were held in abeyance pending the district court’s decision on the motion for vacatur.  In addition, the Court denied a third party’s motion to file an amicus curiae brief or, in the alternative, to intervene and oppose the parties’ motion for remand.  

In her concurrence, Judge Moore cautioned that the district court should not construe the Federal Circuit’s decision to remand as an imprimatur on the parties’ vacatur motion.  Judge Moore, relying on the Supreme Court precedent of U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18 (1994), stated that vacatur was an “extraordinary remedy,” requiring a showing of “equitable entitlement.”  Moore Concurrence at 2.  Additionally, Judge Moore cited to Cardinal Chemical Co. v. Morton International, Inc., 508 U.S. 83 (1993), while noting that the public interest should be considered when deciding whether to vacate a prior decision, especially where that decision invalidated a patent (a situation in which she characterized the public interest as “overwhelming”).  Judge Moore stated that the public rights are particularly vulnerable when considering vacatur following settlement because the parties often benefit, and, thus, no “opposing voice” is heard.  Although, as Judge Newman pointed out, in this instance, the third party seeking to intervene may well disagree with the parties’ motion for vacatur.

While the settlement of the present case also ended three other litigations between the parties involving three other patents, the patentee had already sued a third party on the patent in question.  Judge Moore pointed out that if the district court did not vacate its invalidity judgment, the patentee would be collaterally estopped from asserting its invalid patent in future cases, resulting in judicial economy.  On the other hand, if the district court were to vacate its invalidity judgment, Judge Moore noted that collateral estoppel would likely not apply.  Judge Moore advised that these concerns should weigh heavily against vacatur because the only reason, in her view, that a patentee would seek vacatur of an invalidity decision is to potentially enforce the patent against others.  

Judge Newman wrote separately to add additional views in response to Judge Moore’s concurrence.  Judge Newman indicated that she did not endorse the “proffer of judicial advice on selected issues” provided in Judge Moore’s concurrence.  Newman Additional Views at 3.   In particular, Judge Newman made clear that Judge Moore’s concurrence is not part of the Court’s remand order.  Judge Newman stated that the district court is in the better position to rule on the parties’ motion for vacatur after hearing all of the legal and equitable considerations that may be brought to the court’s attention.  In Judge Newman’s view, the remand should be unencumbered by even the appearance of prejudgment or of the weight to be given various considerations.


Summary authored by Rachel L. Emsley, Esq.