After the Northern District of California granted Plastic Jungle's motion to dismiss Cardpool's infringement suit with prejudice, Cardpool appealed to the Federal Circuit and also filed a request for ex parte reexamination with the Patent and Trademark Office (PTO). The PTO initiated a reexamination and deemed the amended and additional claims to be patentable, but not before the Federal Circuit affirmed the district court's judgment of invalidity due to ineligibility under 35 U.S.C. § 101. On rehearing, the Federal Circuit vacated its summary affirmance of invalidity and remanded to the district court to determine the appropriate course in light of the reexamined claims. On remand, Cardpool and Plastic Jungle jointly moved for a vacatur of the court's prior judgment without prejudice due to changed circumstances, which the district court denied because the mootness was caused by the voluntary actions of Cardpool, the losing party. Cardpool appealed that denial to the Federal Circuit. The Federal Circuit concluded that the district court's denial of vacatur was within the court's discretion and agreed that it was inappropriate for the district court to opine on the revised claims in a suit deemed moot by both parties. The Federal Circuit also concluded that Plastic Jungle was judicially estopped from arguing against the mootness of the district court's invalidity order because Plastic Jungle had previously argued that the case was moot, and the Federal Circuit had relied on that argument. Further, the Federal Circuit found that the basis for the vacatur motion (i.e., that the district court's failure to vacate its judgment with respect to the original claims would preclude Cardpool from asserting infringement of the reexamined claims) was "both speculative and inaccurate" in that the final judgment against the original claims does not automatically bar the new claims granted upon reexamination under res judicata.
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