When Final Judgement Is not Final Enough

In Packet Intelligence LLC v. NetScout Systems, Inc., No. 22-2064 (Fed. Cir. May 2, 2024), the Federal Circuit vacated the district court’s amended final judgment and remanded with instructions to dismiss the case as moot in view of the Patent Trial and Appeal Board’s (“Board”) finding all asserted claims unpatentable.

The district court held that NetScout infringed claims of three patents and awarded damages and an ongoing royalty to Packet Intelligence. NetScout appealed, and the Federal Circuit reversed and remanded the damages award. While the remand was pending, the Board issued Final Written Decisions finding all asserted claims unpatentable. Packet appealed. NetScout moved to dismiss or stay the district case until the conclusion of Packet’s appeal on the PTAB decisions. The district court denied the motion and entered an amended final judgment eliminating all pre-suit damages, reducing enhanced damages and ongoing royalty rate, but retaining the full post-suit damages. NetScout appealed again.

The Federal Circuit rejected Packet’s argument that the Federal Circuit’s decision in the first appeal rendered this case immune to subsequent determination unpatentability because the remand required the district court to issue an amended judgment, which had financial consequences. Further, the ongoing pendency of this case was not due to NetScout’s assertion of issues that are insubstantial and legally untenable, and thus, the Board’s unpatentability determination must be given effect.