Disavowal of Infringement Case Eliminates Article III Standing for Appeal of IPR

In ABS Global Inc., v. Cytonome/St, LLC, the Federal Circuit dismissed as moot an appeal of an inter partes review (IPR) upholding the patentability of some claims of U.S. Patent No. 8,529,161.

ABS’s appeal of the Board’s decision on the IPR followed a district court’s finding that ABS had not infringed the ’161 patent. Cytonome’s response to the appeal contained an affidavit disavowing its right to appeal the district court’s decision of noninfringement. Cytonome argued that ABS could not demonstrate injury in fact sufficient to support standing for the appeal because of its disavowal of further appeal on infringement.

The Federal Circuit found that Cytonome’s disavowal made it unlikely that Cytonome’s challenged behavior would reoccur, effectively finalizing the district court’s opinion. The Court then looked for evidence that ABS “engaged in or had concrete plans to engage in activities not covered by Cytonome’s disavowal.” ABS showed no record evidence indicating it was developing or had plans to develop an infringing product or would incur costs designing around the ’161 patent. While ABS argued its litigation history with Cytonome amounted to an injury in fact, the Court explained that prior litigation history alone is insufficient to establish a reasonable expectation that Cytonome would try to reassert the ’161 claims against ABS. The Federal Circuit, therefore, dismissed ABS’ appeal as moot.