United States: You Only Get One Bite: A Losing Party Cannot Seek Vacatur Based On The Effects Of Its Own Actions

Last Updated: June 13 2014
Article by Monte Cooper and Daniel Justice

Cardpool Inc., v. Plastic Jungle, Inc., No. C 12-04182 WHA (Judge William Alsup)

It might seem tempting for a losing plaintiff in a patent-infringement suit to later use an ex parte reexamination certificate from the USPTO to "moot" its losing judgment by changing the claims of the patent in suit. That is exactly what the plaintiff in Cardpool Inc. v. Plastic Jungle, Inc. attempted to do.  However, the plaintiff's strategy backfired, and its original loss was upheld in a recent case before Judge Alsup.

Some background is in order.  In January 2013, U.S. District Court Judge William Alsup granted defendant Plastic Jungle, Inc.'s motion to dismiss the underlying patent infringement action, finding the asserted claims not patentable subject matter under 35 U.S.C. § 101.  Cardpool appealed that decision to the Federal Circuit but also simultaneously sought an ex parte reexamination of an amended version of the claims originally at issue in the district court case.  A few months later, the Federal Circuit affirmed the district court's dismissal.  One month after that, the USPTO issued a notice of an intent to issue a reexamination certificate for the amended claims.  Cardpool then filed a petition for a rehearing with the Federal Circuit in light of the USPTO's decision affirming patentability of the amended claims.  Both parties argued that the prior district court ruling should be vacated and the case dismissed in light of the USPTO's findings, but for different reasons.  Cardpool claimed the USPTO's ruling had effectively reinstated the lawsuit, since it contended that Plastic Jungle was infringing the reexamined claims, as amended.  Plastic Jungle argued the entire appeal was moot, and that the case needed to be dismissed.  However, the Federal Circuit refused to follow either party's suggestion to vacate the district court's decision, because it concluded that it was the unilateral actions of Cardpool, the losing party, that caused the case to be moot.  Instead, the Federal Circuit remanded the case "to determine what actions, if any, are appropriate in light of the reexamined claims."

Following the remand, the parties submitted a joint statement requesting the district court vacate its judgment as moot so they could be free to stipulate to a voluntary dismissal without prejudice.  Plastic Jungle represented that it was no longer engaged in the accused activities, and Cardpool, for its part, argued that Plastic Jungle only ceased infringing because it was insolvent but might resume activities that infringed the amended claims at some point in the future.  Nonetheless, Judge Alsup refused to vacate the Judgment.  He distinguished between mootness caused by "happenstance" or the unilateral actions of the prevailing party versus mootness caused by "the losing party's voluntary [unilateral] actions."  Quoting the Supreme Court, he found that "[t]he principal condition to which we have looked is whether the party seeking relief from the judgment below caused the mootness by voluntary action."  In this case, Cardpool had caused the mootness by amending the claims at issue and unilaterally obtaining reexamination of the amended claims.  Judge Alsup stated that judicial precedents are valuable, and once issued, belong to the public.  He held that Cardpool's actions could not be grounds to erase a judicial decision and so held that "[t]he judgment (and order) are a part of the history of the asserted patent and cannot be removed by some joint request for vacatur."

Further, he found that under the facts of this case, the reexamination certificate from the USPTO could not trump the earlier Article III court ruling since there had been no ruling relating to the claims as amended through reexamination.  He distinguished this case from the Federal Circuit's Fresenius case in which the court vacated a district court's judgment because of a parallel USPTO proceeding in which the USPTO cancelled the claims at issue.  The distinguishing factor was that the Federal Circuit reviewed the reexamination record and affirmed the USPTO's decision in the other case, while in this case no Article III court had reviewed the reexamination decision.  Under these facts, Judge Alsup concluded that the USPTO examiner's allowance of reexamined claims provided no grounds for vacating his earlier Article III court judgment, especially since the Federal Circuit had specifically refused Cardpool's request to vacate the earlier Judgment.

In the end, Judge Alsup found that Cardpool was attempting to "manipulate the public record to erase its loss so that it would be free to sue Plastic Jungle (and others) on the amended claims."  He found this was an impermissible attempt at a second bite of the apple.  Namely, he found that a second suit on the same patent based on amended claims resulting from a reexamination would be barred by claim preclusion.  Thus, he found that "Cardpool's ship against Plastic Jungle has sailed" and that it "must live with the final judgment and order."

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.