Holding: The Federal Circuit denied a motion to dismiss an appeal due to settlement after the appeal had already been decided, even though the motion did not include a request to vacate the opinion. Additionally, appeals from the PTAB require additional consideration of the Director’s right to intervene under 35 U.S.C. §143.
K.Mizra owns US Pat. No. 8,234,705 directed to a system and method for ensuring that a computer cannot connect to a computer network and spread viruses through the network. The claimed system determines whether a computer should be quarantined when the computer tries to access a protected network. If it is determined that the computer should be quarantined, the computer is allowed limited to access to the protected network through a remediation server which allows the computer to take remedial actions. Any other access requests to the protected network are redirected to a quarantine server which responds with a notification webpage that informs the user that their device is quarantined and provides instructions for how to carry out remediation.
Cisco challenged the ‘705 Patent as being unpatentable in an inter partes review proceeding before the Patent Trial and Appeal Board (PTAB). In particular, Cisco argued that the ‘705 Patent was obvious in view of a combination of the two prior art references. The PTAB concluded that Cisco did not show a motivation to combine the two prior art references since one of the references included all of the benefits of the combination of references.
In a nonprecedential decision on August 16, 2024, the Federal Circuit issued an opinion vacating and remanding the PTAB’s decision that Cisco had not carried its burden of showing a motivation to combine the two prior art references. The Federal Circuit found the PTAB’s analysis to be too rigid in requiring that Cisco show an improvement or benefit when the references were combined. The PTAB should have also considered Cisco’s additional arguments that were directed to other motivations to combine that were not related to the benefit of combining the references.
After the Federal Circuit issued its decision, Cisco moved to voluntarily dismiss its appeal of the PTAB ruling as part of a settlement agreement. Despite asking for dismissal of its appeal, Cisco did not ask the Federal Circuit to vacate the August 16 opinion in this case. The Federal Circuit invited the USPTO to comment as to what action should be taken with regard to the motion to dismiss, and the USPTO requested that the motion to dismiss be denied since the Federal Circuit had already entered a judgment and released its opinion.
The Federal Circuit agreed with the USPTO and denied the motion to dismiss. Even without a request to vacate the opinion, a motion to dismiss after the court has already issued a decision is not required and often not proper. Further, the Court gave additional deference to the Director of the USPTO’s right to intervene in an appeal from a decision by the PTAB under 35 U.S.C. §143, and the USPTO’s suggestion that the motion to dismiss should be denied. However, the parties may still seek dismissal at the PTAB after the case is remanded.
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