When Is It Really Over? If Additional Proceedings Are Needed, Judgment Is Not Final | McDermott Will & Emery
The US Court of Appeals for the Federal Circuit, factually distinguishing the concept of finality in this case from its earlier decision in Fresenius USA v. Baxter Int’l, vacated and remanded a district court’s amended final judgment with instructions to dismiss the case as moot in view of parallel proceedings that had found all patent claims invalid. Packet Intelligence LLC v. NetScout Systems, Inc., Case No. 22-2064 (Fed. Cir. May 2, 2024) (Lourie, Hughes, Stark, JJ.)
This dispute was originally before the Federal Circuit in 2020 when NetScout appealed a district court’s judgment that it willfully infringed multiple patents and that none of the patent claims were shown to be unpatentable or invalid. NetScout also appealed the district court’s damages award, which included enhancements. In the first appeal, the Federal Circuit reversed the damages award, vacated the enhanced damages and affirmed the remainder of the decision (Packet I). While the case was on remand to the district court, the Patent Trial & Appeal Board issued final written decisions in a series of inter partes reviews (IPRs) that had been initiated by third parties, finding all claims to be unpatentable as obvious. Packet appealed the Board’s decisions to the Federal Circuit. The district court issued an amended decision on May 4, 2022, after the Federal Circuit’s first decision remanding the case and after the Board’s final written decisions in the IPRs.
NetScout appealed again, arguing that if the Federal Circuit affirmed the Board’s findings invalidating the patents at issue, then the claims at issue in the litigation would all be unpatentable, which would trigger an immediate issue preclusion that would leave Packet unable to collect on any outstanding monetary damages awarded by the district court. Therefore, the question before the Federal Circuit was whether the decision in Packet I rendered the case sufficiently final such that it would be immune to the Board’s subsequent determination of unpatentability.
The Federal Circuit determined that Packet’s infringement judgment was not final before the Federal Circuit affirmed the Board’s unpatentability judgments. The Court discussed its prior decisions on finality, focusing on its 2013 decision in Fresenius in which the Court considered a different concept of finality. In Fresenius, the Court explained that the finality at issue was not the potential res judicata effect on another litigation. Rather, Fresenius was concerned with “whether the judgment in this infringement case is sufficiently final so that it is immune to the effect of the final judgment in the PTO proceedings, as affirmed by this court.” The Federal Circuit stated that in accordance with this concept of finality (also the one at issue in NetScout’s appeal), a litigation is sufficiently final when it is “entirely concluded” so that the cause of action is merged into a final judgment and the final judgment leaves nothing for the court to do but execute the judgment.
Applying this standard to the facts of the case at issue, the Federal Circuit found that Packet’s cause of action remained pending and was, therefore, not immune to the Board’s now-affirmed findings of unpatentability. The Court explained that the decision in the first appeal did not end the litigation on the merits because it required the district court to modify its original judgment on damages – more than simply executing a judgment.
Packet also argued that the case was in a different procedural posture from Fresenius. However, the Federal Circuit concluded that, according to its precedent, remanded patent cases remain vulnerable to post-mandate developments concerning patentability, even if liability has been resolved by appellate review.
Accordingly, the Federal Circuit vacated the district court’s amended final judgment and remanded the case with instructions to dismiss the case as moot.
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