In ABS Global, Inc. v. Cytonome/St, LLC, [2019-2051] (January 6, 2021), the Federal Circuit dismissed the appeal of a PTAB decision in an Inter Partes Review, sustaining the patentability of certain claims of U.S. Patent No. 8,529,161, finding that it was unlikely that the ‘161 patent would be asserted against the petitioner in the future.

Two weeks after the Board’s final written decision, the district court granted in part ABS’s motion for summary judgment, concluding that ABS’s accused products did not infringe any of the ’161 patent claims. In June 2019, nearly two months after the district court’s summary judgment decision, ABS appealed the Board’s final written decision.

Cytonome’s response brief, filed about three months later, included an affidavit by Cytonome’s counsel stating that Cytonome “has elected not to pursue an appeal of the district court’s finding of non-infringement as to the ’161 patent and hereby disclaims such an appeal.” Cytonome then argued that, because it disavowed its ability to challenge the district court’s summary judgment that ABS did not infringe the ‘161 patent claims, ABS lacked the requisite injury in fact required for Article III standing to appeal the Board’s final written decision regarding validity of the claims of the ’161 patent.

The Federal Circuit, applying the voluntary cessation doctrine, concluded that Cytonome’s disavowal of its right to appeal the district court’s noninfringement judgment mooted ABS’s appeal of the IPR. The Federal Circuit first observed that Cytonome’s assertion of the ’161 patent against ABS cannot reasonably be expected to recur. Although Cytonome’s affidavit disavowing its appeal is unquestionably narrower than a covenant not to sue, Cytonome’s disavowal was “coextensive with the asserted injury” in fact.

The Federal Circuit said that Cytonome’s disavowal estops Cytonome from asserting liability against ABS for infringement of the ’161 patent claims in connection with the accused products, thereby allowing ABS to make, use, and sell those products freely.

The Federal Circuit found that because Cytonome has demonstrated that its disavowal encompasses all of its allegedly unlawful conduct, it was incumbent on ABS to indicate that it engages in or has sufficiently concrete plans to engage in activities not covered by the disavowal.

The Federal Circuit concluded that ABS’s IPR appeal is moot because there is no injury sufficient to support an ongoing case or controversy.