Judge Moore Weighs In on Vacatur of Invalidity Opinions

By Jason Rantanen

The Ohio Willow Wood Company v. Thermo-Ply, Inc. (Fed. Cir. Order 2011)
Panel: Rader (author), Newman (additional views), Moore (concurrence)

When a patentee is faced with an judgment of invalidity or inequitable conduct, it is a relatively common tactic to settle with the accused infringer who, as a condition of the settlement agreement, then joins the patentee in a joint motion for vacatur of the adverse decision.  Although vacatur requires exceptional circumstances, it is sometimes granted by the district court.  See e.g., Gracenote, Inc. v. MusicMatch, Inc.; Block Financial v. LendingTree; New Medium v. Barco.

The situation becomes more complex, however, when settlement occurs while the case is on appeal. Willow Wood involves an appeal of an Eastern District of Texas judgment invalidating the asserted claims of Patent No. 7,291,182.  While the appeal was pending, the parties settled and filed a motion for remand to the district court for consideration of a motion for vacatur.  In July 2010, the CAFC issued an order pointing out the high standard for vacatur and ordered the parties to explain what extraordinary circumstances would be presented to the district court that would justify vacatur.  Ohio Willow Wood Co. v. Thermo-Ply, Inc., (Fed. Cir. Order July 29, 2010) (nonprecedential). 

After considering the parties' response, along with an intervention request by a third party also being sued for infringement of the patent, the panel granted the request for "the limited purpose of the district court's consideration of the parties' motion for vacatur."  Ohio Willow Wood Co. v. Thermo-Play, Inc. (Fed. Cir. Order 2011) (Willow Wood II). The CAFC retained jurisdiction, however, "so that any of the parties may seek appellate review by notifying the Clerk of the Court within thirty days of entry of the district court’s decision on remand."  Id. at 3.

Concerned about the remand's potential imprimatur on the joint vacatur motion, Judge Moore, writing in concurrence, expressed the opinion that vacatur of existing invalidity opinions should be a rare and disfavored event, particularly in the patent context.  Citing U.S. Bancorp Mortgate Co. v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), the judge reiterated the high threshold for justifying vacatur following settlement: "[o]nly in 'exceptional circumstances' should a district court grant vacatur at the request of the litigants."  Willow Wood II concurrence at 2.  This is particularly true with respect to patents:

In this case, for example, the patentee has already sued another party on the patent in question. If the decision that invalidated the patent at issue is not vacated, then the patentee will be collaterally estopped from asserting this patent in this and other suits, thereby saving courts and litigants the time and money it takes to proceed with patent litigation. Patent litigations are among the longest, most time-consuming types of civil actions. As of 2009, 384 patent cases had been pending in the district courts for three years or more. 2009 Admin. Off. U.S. Cts. Ann. Rep., at Table S-11. Moreover, the costs of patent litigation are enormous with an average patent case costing upwards of $3 million for each side. See American Intellectual Property Law Association, Report of the Economic Survey 2009 I-129 (2009). If the district court vacates its invalidity judgment then other defendants and other district courts will be forced to proceed with infringement suits, as there would likely be no collateral estoppel. Even if there were no other suits pending, these concerns should still weigh heavily against vacatur, as the only reason the patentee would want an invalidity judgment vacated is to potentially enforce the patent against others.

Concurrence at 3-4.

Judge Moore's decision to weigh in on the merits of the vacatur issue was criticized by Judge Newman, however, who wrote separately "to point out that the views of our colleague in separate concurrence are not the court’s remand order." Willow Wood II, additional views at 2.  Although favoring the remand on the basis that the district court is in the better position to rule on the issue of vacatur, Judge Newman declined to endorse Judge Moore's proffer of judicial advice, commenting that "[o]ur remand should be unencumbered by even the appearance of prejudgment or of the weight to be given to various considerations. Indeed, the issues on which our colleague in concurrence offers judicial advice are more complex than is here recognized."  Id.

81 thoughts on “Judge Moore Weighs In on Vacatur of Invalidity Opinions

  1. 81

    Perhaps not school boy. I done already shot down your pathetic attempt ta change my style, go, find, and re-read that little gem.

    But if it makes ya feel any better, I added ya to the list of internet toughguys.

    Funny, it’s the same list as internet crybabies.

    It’s too bad that “the Five Horsemen” just doesn’t have the same ring as “the Four Horsemen”. But do continue to bring the chuckles school boy. Your little mantra of the software anti-patent crowd is amusing.

  2. 80

    That makes a nice matching set then for your “it-nust-be-so-because-I’m-the-policy-wankster” attitude.

    But thanks for being so brave again to put out your feelings for them to be wrong. You are such the sport.

  3. 79

    You think you disagree, but you’re mistaken. You’re simply experiencing an illusion caused by the limits of your comprehension.

    If you were able to fully comprehend both the problem and the truth about patents, you would agree.

    So what appears to be a difference of opinion is just you wrestling with your own defective brain.

    Your “holier than Thou” attitude is not well received.

  4. 78

    Disagree.

    [with liberal “encouragement” from Scott Adams – i.e., read that as his script]

    Actually. you don’t disagree.

    You think you disagree, but you’re mistaken. You’re simply experiencing an illusion caused by the limits of your comprehension.

    If you were able to fully comprehend both the problem and the truth about patents, you would agree.

    So what appears to be a difference of opinion is just you wrestling with your own defective brain.

    There’s no reason to get the rest of us involved in that mess.

  5. 77

    Wilton: I think an honest discussion about patents must recognize the harm they can cause with regard to the broader economy.
    ___________________________________________________________________

    Since it’s a proven, undeniable fact that every patent earned by a new entrepreneur creates at least one new job your statement is inherently false.

  6. 76

    If we are drawing lines and picking sides, place me on the side that thinks having patents and a patent system is a good thing.
    Posted by: A New Light | Jan 09, 2011 at 11:48 AM

    ______________

    Welcome to our side.

  7. 73

    I think this is an erroneous statement. Patents do not put a drag on the economy. Because they force others to look for new paths, they actually invigorate the economy. Because they reward effort to invent, they invigorate the economy.

    Disagree. I shouldn’t have to explain this, but patents give patent holders a legal monopoly over the goods or services they describe in their claims. Those legal monopolies allow patent holders to charge profit-maximizing prices for such goods. And for NPE patent holders, patents allow them to effectively place a tax upon innovation and economically beneficial activity (i.e., producing goods and services for which there is a market) undertaken by others.

    You say that patents force others to look for new paths. Exploring those new paths, however, is a costly endeavor, and such endeavors only make sense from an economic standpoint if they result in better options. If those alternative paths do not result in better options than what was originally patented, then the efforts expended pursuing such paths end up being dead-weight losses. Furthermore, even if such paths lead to better options, those options may still not be free and clear of the patents they were intended to design-around. In either case, the patent created an artificial barrier to entry that the entrant must overcome. If you know anything about antitrust law, you know that these are things we as a society want to avoid.

    I agree that far too many people posting here who have a negative view, or even a view of bare toleration. I do not mind discussions on the weaknesses of the current system because those tend to have the intent of making the system better. But those who post who simply have an agenda against patents, who would weaken them at any and every opportunity, those I think do not understand what the patent system actually is.

    If we are drawing lines and picking sides, place me on the side that thinks having patents and a patent system is a good thing.

    Despite what I said above, I am not anti-patent (surprise!). I believe in patent minimalism (sort of like “copy-left” for patents), but I do think that as a concept, patents benefit society by encouraging disclosure of new and useful technology. I think this is especially true regarding inventions that require a very large amount of initial investment of resources. Where I break from the pack is with regard to patentability (I think the obviousness analysis should be at least as rigorous as KSR seems to indicate) and how long patent terms should be.

    In any event, I think an honest discussion about patents must recognize the harm they can cause with regard to the broader economy. From there, we can view the merits of a patent system through a cost-benefit analysis. However, pretending that there is no cost whatsoever to having a patent system is at best ignorant, and at worst intellectually dishonest.

  8. 72

    It is for this reason that we tolerate their effect of putting a drag on the economy.

    I think this is an erroneous statement. Patents do not put a drag on the economy. Because they force others to look for new paths, they actually invigorate the economy. Because they reward effort to invent, they invigorate the economy.

    I agree that far too many people posting here who have a negative view, or even a view of bare toleration. I do not mind discussions on the weaknesses of the current system because those tend to have the intent of making the system better. But those who post who simply have an agenda against patents, who would weaken them at any and every opportunity, those I think do not understand what the patent system actually is.

    If we are drawing lines and picking sides, place me on the side that thinks having patents and a patent system is a good thing.

  9. 71

    lack of respect for actual inventors is the anti-thesis of this country’s founding.

    Oh, and !!! Bilski 14 !!!

    Posted by: AI’s dear Diehrist | Jan 07, 2011 at 08:58 PM

    ___________

    Thus they forget that the Actual Inventor is the sun of the patent universe.

  10. 70

    Maybe I’ll watch a Family Guy marathon this weekend. Any suggestions?

    and

    all in one relatively short post

    W

    T

    F

    Whatever you do Ping, do not read this blog as your “style” may make people make suggestions of sockpuppet conspiracies.

  11. 69

    Accordingly

    You make the same ideological mistake of losing the trees for the forest as is being done on a similar discussion at Gene’s IP Watchdog.

    This type of annihilation of individuals in the name of “the people” is a disgrace and a true loss of vision. Such a proletarian treatment of individuals that make up this union and lack of respect for actual inventors is the anti-thesis of this country’s founding.

    Oh, and !!! Bilski 14 !!!

  12. 68

    … you really dont want to go and borrow the poles he sits on (I heard that he does not wash them). … Should we assume that the Supremes of judiciary must include the PUBLIC because the big C delegates the article three powers?

    Impressive. The classiness of 6, the barely comprehensible dissembling of Noise, and the straw of Malcolm, all in one relatively short post.

  13. 67

    You really need to pay attention to the context of the discussion before ya get all excited about quotin the Preamble – Were we talking about gun rights or freedom from illegal search and seizure? those bits are in the Big C too. Should we assume that the Supremes of judiciary must include the PUBLIC because the big C delegates the article three powers?

    We should at least assume that the foregoing portions of the Constitution were written with the public’s interests in mind. Last I checked, the Preamble provides the reasons and purposes for why the Framers “do ordain and establish” the Constitution in the first place, including “to form a more perfect Union, … promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity”. Accordingly, it would be folly to totally write-off the liberty interests of the public with regard to any section of the Constitution, including Section 8, Clause 8.

    I don’t think so – that would be out of, well, out of focus, now wouldn’t it? If you are talking about patents you might want to focus on that particular portion of the big C – you know, the one that eyeball posted and reminded all you chuckleheads about? Keep you eye on the words of that phrase.

    Your “focus” appears to have given you tunnel-vision. Section 8, Clause 8 is not all about inventors. It’s about promoting the progress of sciences and useful arts. That’s why patents exist: to promote technological progress and innovation. It is for this reason that we tolerate their effect of putting a drag on the economy. It’s not because we think inventors are a special class of citizens.

  14. 66

    Iza just haven’t watched any good shows lately to replace teh ghetto shtick (The Austin Powers marathon was sooo long ago).

    Maybe I’ll watch a Family Guy marathon this weekend. Any suggestions?

    As for Cy’s comment, school boy – you really dont want to go and borrow the poles he sits on (I heard that he does not wash them).

    You really need to pay attention to the context of the discussion before ya get all excited about quotin the Preamble – Were we talking about gun rights or freedom from illegal search and seizure? those bits are in the Big C too. Should we assume that the Supremes of judiciary must include the PUBLIC because the big C delegates the article three powers?

    I don’t think so – that would be out of, well, out of focus, now wouldn’t it? If you are talking about patents you might want to focus on that particular portion of the big C – you know, the one that eyeball posted and reminded all you chuckleheads about? Keep you eye on the words of that phrase.

    As for MM – I aint his keeper. His spoutin is a chuckle machine and I aint abouts (sorry) – I am not about to turn off the spigot on that laughter flow.

  15. 65

    Hey Ping,

    I am so glad you are on this board. Your comments are always interesting and without you MM would be spouting off even more, but can you go back to writing normally?

    Indeed, all of us are getting tired of your ghetto schtick.

  16. 64

    Hey school boy Willton, what else is there in that there (C)onstitution?

    Yeah that’s right – what ol eyeglasses be sayin.

    Or are ya actually denyin the facts of what he be sayin? That’ll bring some chuckles – just let me know.

    Yes, the word “Inventors” is in Section 8, Clause 8. Thank you for pointing out the obvious. I don’t see how this has anything to do with whether patents create a burden upon the freedoms of the public.

    And ya can put PUBLIC in caps all ya want, that word still aint in the big C like inventors be.

    Please tell me you can (C) all this, cantcha?

    Oh, I (C) it. I just don’t (C) it as relevant to the conversation. The question is whether patents act to restrict public freedoms. Ownership is not pertinent to answering the question.

    As for whether the Constitution is concerned about the public, see Cy’s post.

  17. 63

    Hey Ping,

    I am so glad you are on this board. Your comments are always interesting and without you MM would be spouting off even more, but can you go back to writing normally?

  18. 62

    It be the pole – we be talking abouts the immediate patent clause here – ya know? talkin abouts a particular thing? cantcha (C) that?

  19. 61

    And ya can put PUBLIC in caps all ya want, that word still aint in the big C like inventors be.

    You’re right, as usual, Ping. But another way to say “public” is “we the people.” And if you look at an original version, they put that in there in REALLY BIG LETTERS, so that even people with poorly-prescribed eyeglasses could see it. That hardly suggests to me that the public was only a “secondary matter” to the drafters of the Constitution.

    Yes, I think “tunnel vision” was a correct diagnosis.

    Of course, that could just be the pole talking.

  20. 60

    And lols to the “patent maximalist” phrase.

    Knowin how really good patents be as a concept, sign me right up to be one of them there patent maximalists, woncha?

  21. 59

    farking” ?

    Hey school boy Willton, what else is there in that there (C)onstitution?

    Yeah that’s right – what ol eyeglasses be sayin.

    Or are ya actually denyin the facts of what he be sayin? That’ll bring some chuckles – just let me know.

    And ya can put PUBLIC in caps all ya want, that word still aint in the big C like inventors be.

    Please tell me you can (C) all this, cantcha?

  22. 58

    Paul Morgan said:

    “Settlements that result in or allow previously discovered patent invalidity evidence to be destroyed or otherwise become non-obtainable by other potential defendants may be more of a public interest concern than vacatur itself?”

    Huh? I think the original Supreme Court cases on inequitable conduct centered on deals to suppress public use evidence. I hardly think any patent owner would do such a thing, let alone would a court allow it, given that this borders on fraud on the court.

    See Keystone Driller

    link to scholar.google.com

  23. 57

    That may be as you say, but that is not evident given the fact that this primary consideration is often missed here and the focus is on secondary matters.

    Rather like what you are doing right now.

    What? No, the primary consideration of patent law is “To promote the Progress of Science and useful Arts”. It’s right there in the farking Constitution! Or are you so focused on the inventor that you are unable to understand this simple bit of text?

    As it were, the answer to your question is that it is up to the inventor just whom he would like to exclude. I know that you were fishing for a different answer and are probably dissapointed that the answer still revolves around the inventor, but that’s what you get for living in a world of the wrong focus.

    You can have your answer focus on the inventor as much as you want, but the fact remains that whoever the inventor decides to exclude is A MEMBER OF THE PUBLIC. Thus, when an inventor decides to enforce his patent against one or more members of the public, the effect is a restriction of the freedoms of such members of the public. We may tolerate such restrictions in the interest of promoting innovation, but they are restrictions nonetheless.

    You claim to see things clearly, but it appears more like you see things through the clouded lens of a patent maximalist. Otherwise you would not be so obtuse.

  24. 56

    Oh I’m aware Ned. The trains ran on time in Italy in 1939 you know.

    I will go so far as to say I admire many things about China and their gov. Including, I note, becoming more capitalistic without having a national food shortage etc. spur it into happening. On the other hand, there are many things I do not like about what goes on over there of course. I’m not too worried about it, it looks like things are getting better and by the time I’m 40 I suspect more reasonable people will be in power over there. We can’t really ask for much more.

  25. 55

    We all know who owns the right.

    That may be as you say, but that is not evident given the fact that this primary consideration is often missed here and the focus is on secondary matters.

    Rather like what you are doing right now.

    As it were, the answer to your question is that it is up to the inventor just whom he would like to exclude. I know that you were fishing for a different answer and are probably dissapointed that the answer still revolves around the inventor, but that’s what you get for living in a world of the wrong focus.

  26. 54

    6, I wouldn’t quite say that you admire fascism with your observations about China, but what you said about the “efficiency” of non democratic governments in getting things done was one of the arguments made by fascists prior to WWII of the superiority of “national socialism.”

  27. 52

    Exclusive FOR whom – that is the proper focus.

    No, it is not. We are not talking about ownership of a patent. We are talking about the effect of a patent.

    Again – trying too hard to not see what is plainly there…

    And you are trying too hard to be obtuse. We all know who owns the right. But the right is an exclusive right, so we’d like to know the identity of the target of the exclusive right. Now, can you please answer that question?

  28. 50

    Exclusive FOR whom – that is the proper focus.

    Again – trying too hard to not see what is plainly there…

  29. 48

    What do you think an “exclusive Right” is?

    A reward for the inventor. It says so right there. Duh.

    Do not have such an open mind that your brain falls out.

    Do not strain so hard to see something that you miss the item of primary focus. Broad vision is OK as long as you recognize the main focal point. That is absent here and thus my friendly reminder.

  30. 47

    Methinks the focus of certain posters here needs to be re-aligned.

    Methinks the tunnel-vision of certain posters here needs to be broadened.

  31. 46

    To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

    Funny – restricting the public freedom isn’t even mentioned (directly).

    What do you think an “exclusive Right” is?

  32. 45

    To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

    Funny – restricting the public freedom isn’t even mentioned (directly).

    But Authors and Inventors are mentioned – directly.

    Methinks the focus of certain posters here needs to be re-aligned.

  33. 44

    So, second dope, I wonder what Chevron would say about a presumption that a federal agency is issuing nuissances. Can you navigate your way to an opionon on that one?

    Um, why are we invoking Chevron? What does administrative deference have to do with the economic effect of a patent monopoly?

  34. 43

    a presumption that a federal agency is issuing nuissances

    That’s like saying “I wonder what people would say about the presumption that Coca-Cola Co. is issuing fizzy beverages”.

    It’s not a “presumption”, it’s by design. It’s specifically provided for in the Constitution that the government may restrict the public freedom for limited periods of time, for Science.

    I’ll bite – what does Chevron say about the government legislating within its explicit Constitutional jurisdiction when some member of the public finds that legislation inconvenient?

  35. 42

    Maybe the banksters should have actually tried to get real patents on their innovative techniques.

    Failing banks could have then sold those to trolls and we would have the uber-bankster-business-method-trolls.

    The thoughts send shivers down my spine.

  36. 41

    Singing sock puppets.

    So, second dope, I wonder what Chevron would say about a presumption that a federal agency is issuing nuissances. Can you navigate your way to an opionon on that one?

  37. 40

    Speaking of broken moral compasses, the Wells Fargo and US Bank just got crushed by the Massachusetts Supreme Court for their “innovative” methods of mortgage recordation:

    In a major ruling in the Massachusetts Supreme Court today, US Bank and Wells Fargo lost the “Ibanez case,” meaning that they don’t have standing to foreclose due to improper mortgage assignment. The ruling is likely to send shock waves through the entire judicial system, and seriously raise the stakes on foreclosure fraud. Bank stocks are plummeting at this hour.

    link to ftalphaville.ft.com

    An awesome development, at least for those of us who have watched the banksters’ “innovate” for years, with growing disgust.

  38. 39

    He would probably recognize them as a necessary evil, if he thought there was anything wrong with them.

    Indeed. Quite ironic that he’s the one prattling on about one’s “moral compass.”

  39. 37

    What do you think invalid patents are?

    He would probably recognize them as a necessary evil, if he thought there was anything wrong with them.

  40. 36

    So, second dope without a moral compass, you are saying that the Federal Government is issuing public nuissances in patents?

    What do you think invalid patents are?

  41. 34

    you are saying that the Federal Government is issuing public nuissances in patents?

    You are saying that the government isn’t letting private citizens define the basis on which they can sue other private citizens and demand injunctions?

    Patents are a nuisance, but that is the price of technological advancement. We happily pay that price as long as it remains reasonable and reasonably connected to the advancement, but we have to draw the line at some point when the nuisance outpaces the benefit. Just like having to listen to everybody else’s ridiculous opinion is the price of freedom, having to stay off other people’s land is the price of capitalism, and spending countless taxpayer dollars and lives on the military is the price of personal security.

    You didn’t think all this freedom was free, did you?

  42. 33

    So, second dope without a moral compass, you are saying that the Federal Government is issuing public nuissances in patents?

  43. 32

    As a matter of law they are not a public nuisance.

    As a matter of law they are a tolerated nuisance, and if you’ll check your Constitution (a few sections up from the Second Amendment) you’ll note that the exclusive right only exists to further the public interest in the advancement of the useful arts.

    The only people who ever advocate expanding the nuisance beyond its conceivable ability to benefit society are the ones who make their money off creating additional nuisances. For some reason, this blog attracts that sort of “moral compass”.

  44. 31

    Dope MM: your dopey posts read like you think that patents are a public nuisance so that the public interest trumps the rights of the patent owner and the defendant. As a matter of law they are not a public nuisance. Dope without a moral compass.

  45. 30

    >>This is basically judge-speak for “you’re not >>as smart as you think you are, so keep your >>mouth shut.”

    Boy, we are all in trouble once this dope J. Moore becomes he chief judge. The problem is that she sold her soul to get the appointment and the road to redemtion is probably too long and tough for the likes of her to travel.

    Result, we are going to have 20 to 30 years of cr@p from J. Moore. Oh boy, another Stern. I wish that J. Moore would go live on a island by herself with just J. Rich’s and J. Newman’s opinions to read. And, only her book to burn to warm her soul.

  46. 29

    Womble Carlyle Faces Malpractice Suit
    Jordan Weissmann

    The National Law Journal
    July 01, 2009

    “The foundation’s allegations stretch back to an application it filed in 1994 to acquire four new telecommunications channels in Henderson, Nev., just outside Las Vegas. When the Federal Communications Commission rejected the application in 2004, handing the channels to a competitor instead, the foundation instructed Womble to file an appeal with the U.S. Court of Appeals for the D.C. Circuit. The firm allegedly filed after 32 days — two days past the deadline. The appeals court dismissed the filing as untimely.”

  47. 28

    Settlements that result in or allow previously discovered patent invalidity evidence to be destroyed or otherwise become non-obtainable by other potential defendants may be more of a public interest concern than vacatur itself?

  48. 27

    He done say – “shut your jealous mouth, basement boy.”

    But I would say: You? Telling someone else their lines or style be stale? Oh, that bring the chuckles big time.

    Doncha have some important windmills to be otch about there Sunshine?

    But I understans what Freud be sayin – ya usually like to say your protaganist be doin what you be doin, and ya just didn’t come up with my rightious style, now did ya? Ya’ll be jealous as all get out.

  49. 26

    Boy Freud would say that such over-compensation really points out somethin and then weza

    What did Freud say about writing in a pseudo-dialect long after the joke had gone stale?

  50. 25

    And my main man – 6 is once again too dense to get the nuance of your comments.

    A shame really – he might enjoy that one. Instead we get the internt tough guy response. Boy Freud would say that such over-compensation really points out somethin, and then weza would need to send for the best search and rescue teams to try to find his manhood.

  51. 24

    Man guys look at the article over at 271.

    “To lift its patent count, China has introduced an array of incentives including cash bonuses, better housing for individual filers and tax breaks for companies that are prolific patent producers. Even at its current pace, China is expected to overtake US patent filings by 2012.”

    China knows how to promote its useful arts. Within the next decade or so, when women folk start becoming scarce due to their parents killing them off/not having them in favor of having a boy, the gov will no doubt start offering the good stuff.

    A bud of mine actually was saying he was impressed with how well the chinese got stuff done with their gov. (even if it wasn’t always good stuff). Looks like we’ll be in for quite a ride here soon.

  52. 23

    “Is is nonsense to pay a known, relatively-small cost now to avoid the risk of an unknown, potentially large cost in the future?”

    Yes, unless you don’t think you can extort some money out of the patentee, or like I said, you think the jury/judge is wrong or unless you’re completely ignorant of patent matters and couldn’t decide for yourself (sadly that later state is probably the state of most defendants). If he’s dirt poor, which is unlikely since he has someone bank rolling this litigation venture, then perhaps. Personally I would wring him dry. And if he was a troll I’d warn him about trolling my industry.

    “Do you know of any case where a patentee pays to settle after an adverse decision? Seems unlikely to me.”

    Nope. Then again, I also don’t know of many accused that have particularly large balls and are sophisticated enough to know to attempt this.

    “unless there are drugs involved.”

    Or guns. Or perhaps *women (and maybe men too lol) of questionable morals*.

    But lets be clear, in any hypothetical patent hold up attempted upon my person we’d be starting out with the presumption that I was prepared to f up his portfolio something outrageous. I wouldn’t be your typical patent ignorant, spineless, intimidated victim with an unimaginative, spineless, intimidatable, incompetent lawlyer at my side. Scortched earth is the name of my “defense” which is really more of an offense.

    Although, I’d probably make him a pretty reasonable settlement offer up front, enough to pay for his having drafted and prosecuted the app, and having detected the potential infringement, within reason, in exchange for a perpetual license. And he can either be happy with it, or suffer. If he’s active in licensing a small portfolio and I can get the information about this he’ll more than likely be suffering some extortion at my hands by the time I’m done with him though, just for rousing me and for kicks.

    So, on the whole, it is nearly inconcievable that I’d ever end up at the point in litigation after an actual trial took place.

    If I didn’t work at the office I’d already be extorting a couple of companies :( This being a relatively new business model (so far as I’m aware) I’m not really ready to quit my day job just to piggy back on the millions of dollars in licenses these companies have.

    I mean, so far as I’m aware nobody has written up any form paragraphs to say “Hello, I’ve just been made aware that you’re making x dollars or y percentage from your licensing deals on z patent. I have prior art to destroy your patent in a re-exam, and I want *fill in blank* to not do so”. What is the proper tone to take? Aggressive? Reasonable? Uncaring? Do you send them a sample of a primary ref? Is it unethical? Illegal? Mean? Does any of that matter even if any of them are in fact what is going on? So many things to consider.

  53. 22

    “Is is nonsense to pay a known, relatively-small cost now to avoid the risk of an unknown, potentially large cost in the future?”

    Yes, unless you don’t think you can extort some money out of the patentee, or like I said, you think the jury/judge is wrong or unless you’re completely ignorant of patent matters and couldn’t decide for yourself (sadly that later state is probably the state of most defendants). If he’s dirt poor, which is unlikely since he has someone bank rolling this litigation venture, then perhaps. Personally I would wring him dry. And if he was a troll I’d warn him about trolling my industry.

    “Do you know of any case where a patentee pays to settle after an adverse decision? Seems unlikely to me.”

    Nope. Then again, I also don’t know of many accused that have particularly large balls and are sophisticated enough to know to attempt this.

    “unless there are drugs involved.”

    Or guns. Or perhaps *women (and maybe men too lol) of questionable morals*.

  54. 21

    That really puts a different perspective on it, doesn’t it?

    It does, but there’s more to that different perspective. It exists in a forum where it’s up to the prospective infringer to challenge the patent, and there’s also a chilling effect on any subsequent prospective infringer who might do the same.

    I’m not a betting man, but I would wager that you’d see far fewer reverse settlements from Big Pharma if they had to go around suing the generics for infringement like common folk, and mere vacatur was the best they could hope for in return.

  55. 20

    “Is there really no cost saving at all in the second litigation on the exact same patent?”

    None. Litigators will find a way to bill their hours every time.

  56. 19

    I can’t imagine that ever happening, unless there are drugs involved.

    HA! I was just about to say the same thing.

    But aren’t you the one who said we should be worried about the chilling effects on settlement agreements following an adverse validity assessment by the lower court? In other words, that drug company will fight tooth and nail to get their patent back, and won’t settle with the defendant for any reasonable amount.

    But then, we have that whole reverse payments settlement thing that was recently ruled to be legal. So the patentee, upon getting a lower court decision indicating invalidity, can pay the defendant money to take a “license” as a “settlement” in order to get the invalidity ruling vacated.

    That really puts a different perspective on it, doesn’t it?

  57. 18

    Newman is a sage. Having seen my share of rough justice of lower courts punching out patents to “stream line the case,’ jerk the parties toward settlement, etc, etc. Judicial resources – would actually be conserved if the parties could settle during the appeal and get vaccure. Besides, if the courts invalidity holding is so persuasive – the other defendant in the other enforcement action should have no problem presenting the winning argument.

  58. 17

    Do you know of any case where a patentee pays to settle after an adverse decision? Seems unlikely to me.

    That does sound pretty crazy. A sort of settlement-in-reverse, as it were.

    I can’t imagine that ever happening, unless there are drugs involved.

  59. 16

    “Also I note that presuming that the accussed would pay the patentee to settle is nonsense.”

    Is is nonsense to pay a known, relatively-small cost now to avoid the risk of an unknown, potentially large cost in the future? Do you know of any case where a patentee pays to settle after an adverse decision? Seems unlikely to me.

  60. 15

    Malcolm, I think the only equities that are under review on remand are the equities of the infringer. The holding of the Supreme Court clearly is that the settling appellant has voluntarily surrendered his equitable right to vacatur by the act of settlement. I can hardly think that the patent owner could ever justify vacatur. However, the defendant has rights too and he or she has to have their day in court as well. Your earlier posts never consider their interests, and seem to assume that somehow the patent owner could justified vacatur on some grounds, or that the defendant’s equities be balanced against the needs of future defendants.

    Assume for example that the defendant needs to settle in order to do a public offering in order to stay in businees. They present this to the court. Are their equities to be ingnored because the next defendant my have to relitigate validity? The failure to vacate my collapse the settlement and force the defendant into bankputcy.

  61. 14

    I’m sure the USDC J doesn’t need J. Moore’s “mere reminder.”

    All those banana fumes cause forgetfulness.

  62. 13

    “Moore is merely reminding the District Court why vacatur is something that should be exceedingly rare in the patent context, for the reasons she presented.”

    I’m sure the USDC J doesn’t need J. Moore’s “mere reminder.”

    J. Newman got it right. Again.

  63. 12

    “Ya see, you would actually need to run the course of the full litigation through all appeals in order to have a true view of the “validity” question. When that process is interrupted by settlement, ya just dont get there. So my main man’s view is ascendant.

    You would need the “wheels of Justice” to keep on churning after the settlement in order to reach the point that Moore’s view could apply. As our coourt system is not set up to do that, requiring a live case or controversy in most instances, issues sometimes get stymied and must remain for further court cases to be fully resolved. Justice, not expediency rules this debate.”

    You are re tarded.

    That said, sure, they should be able to have their appeal. But they sure as f shouldn’t be able to give up their appeal and simply settle the issue and wipe their loss.

    Also I note that presuming that the accussed would pay the patentee to settle is nonsense. Unless I thought the jury was wrong (in which case I probably would have settled long ago) I’d make the patentee pay me to settle the case, especially if he wanted me to help him get the ruling vacated. Especially so if I just paid 3 million to get that ruling. He already lost, just because he might can have a do over doesn’t negate that he just lost. He can either kiss all his other cases goodbye or he can pay me. I note that I’d also probably file a reexam on any other patents he had just for good measure and to ensure he paid up.

  64. 11

    Ned The problem with Moore’s views are that they infest and pollute a district court’s consideration of circumstances between the parties that might justify vacatur with extraneous public policy arguments.

    The policy arguments are hardly “extraneous.” Moore is merely reminding the District Court why vacatur is something that should be exceedingly rare in the patent context, for the reasons she presented.

    pingaling Justice, not expediency rules this debate.

    Not sure what “debate” you’re referring to, but certainly the views you are promoting have little to do with “justice” and everything to do with elevating the convenience of litigants (in this case, almost always exceptionally wealthy litigants) above the public interest, and the desire to promote settlement even after vast public resources have been spent determining the facts and reaching a decision on the merits.

  65. 10

    I think the Supremes were saying this:

    Settlement alone does not warrant vacatur. The appellant has forfeited his equitable right to vacatur. However, there may be circumstances between between the parties that justify vacator and that remand to the district court is justified for this purpose.

    From US Bancorp:

    “We hold that mootness by reason of settlement does not justify vacatur of a judgment under review. This is not to say that vacatur can never be granted when mootness is produced in that fashion. As we have described, the determination is an equitable one, and exceptional circumstances may conceivably counsel in favor of such a course.”

    The problem with Moore’s views are that they infest and pollute a district court’s consideration of circumstances between the parties that might justify vacatur with extraneous public policy arguments. The circumstances the Supremes had in mind are the equities surrounding the parties to the case.

  66. 9

    you should not be able to reverse the judgment via…

    Cepts ya be wrong again Sunshine. Duck your head, here coomes another windmill blade.

    Ya see, you would actually need to run the course fo the full litigation through all appeals in order to have a true view of the “validity” question. When that process is interrupted by settlement, ya just dont get there. So my main man’s view is ascendant.

    You would need the “wheels of Justice” to keep on churning after the settlement in order to reachthe point that Moore’s view could apply. As our coourt system is not set up to do that, requiring a live case or controversy in most instances, issues sometimes get stymied and must remain for further court cases to be fully resolved. Justice, not expediency rules this debate.

  67. 8

    Malcolm: If your patent is invalidated by a district court, you should not be able to reverse the judgment via some post-decision agreement with the party you sued.

    I would agree with that, if this weren’t all happening on appeal from that very decision.

    The appeal would have given the patentee a chance to reverse the judgment, but he can’t both pursue that appeal (and thereby seek to preserve his remedy against other infringers) and settle the current litigation.

    Suppose you sued someone for punching you in the face. The trial court ruled that not only did the defendant not punch you, but as a matter of law you don’t have a face. Naturally, you appeal.

    For reasons that are entirely your own, you later agree to settle the appeal. But supposing you do, and the decision below is not vacated, what remedy do you have the next time someone punches you in (what you allege is) your face?

  68. 7

    Maybe the solution is that infringer wins at trial by invalidity, parties want to settle but can’t because patentee can’t have the estoppel effect vacated, as district court judgment is last judgment standing. so settlement is that patentee and infringer conspire to have infringer botch/sabotage the appeal, almost forcing the CAFC to reverse the invalidity; and infringer then gets the settlement. look out FTC!

  69. 6

    Newman: Indeed, the issues on which our colleague in concurrence offers judicial advice are more complex than is here recognized.” Id.

    Actually, they aren’t more complex than that.

    I completely agree with Judge Moore. If your patent is invalidated by a district court, you should not be able to reverse the judgment via some post-decision agreement with the party you sued. Public policy favors the return of the mis-granted intellectual property to the public. The only policy running counter to this is the policy that favors providing wealthy litigants a forum to play their games at the expense of the public interest. No surprise that a former corporate attorney and DC Villager like Newman would instinctively favor the latter.

    Judge Moore said all that needed to be said.

  70. 5

    Allowing patents held invalid to continue to be used to sue others runs afoul of Sup. Ct. decisions.

    I don’t think anybody will disagree with you there.

    The important question here is whether we should consider a patent “held invalid” merely for having been the subject of a settled infringement litigation, in which the question of invalidity was mooted on appeal when the patentee licensed the defendant for any potentially infringing acts.

  71. 4

    Allowing patents held invalid to continue to be used to sue others runs afoul of Sup. Ct. decisions. E.g., Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery, 324 U.S. 806 (1945) “A patent by its very nature is affected with a public interest.” Particularly in this case, Lear v. Adkins, 395 US 653 (1969) and Blonder-Tongue Lab. v. University of Illinois Found., 402 U.S. 313 (1971).

  72. 2

    Memorable quote: “Indeed, the issues on which our colleague in concurrence offers judicial advice are more complex than is here recognized.”

    This is basically judge-speak for “you’re not as smart as you think you are, so keep your mouth shut.”

    Although the patent was held invalid, all parties know there is some risk that the finding will be overturned on appeal. Otherwise, why would a prevailing defendant (presumably) pay for a license to a patent that was invalidated.

    The real party in interest is the plaintiff’s new target, so the better mechanism might have been to let Alps substitute for the defendant on appeal to try and defend the invalidity verdict. But that just makes too much sense, I suppose …

  73. 1

    Moreover, the costs of patent litigation are enormous with an average patent case costing upwards of $3 million for each side.

    Is there really no cost saving at all in the second litigation on the exact same patent? Surely, even if the holding of invalidity is vacated, a future infringement defendant could raise the same arguments and the same prior art. Or are the scales of justice the only ones with no economy?

    While we’re looking at factors that are “particularly true with respect to patents”, how many trials in other areas of law routinely request an order that the plaintiff has no right (invalidity) as opposed to the more usual order that the plaintiff’s right does not entitle him to a remedy on the facts (non-infringement)?

    Are we not concerned with the deterrent effect on settlements of a trial-level finding of invalidity that would ordinarily be subject to an appeal? Must the patentee disavow any remedy against other infringers in order to settle the present case? I would think the existence of one or more infringers should make it even more important that we not hold the patentee to a holding of invalidity that has not had the benefit of an appeal.

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