Background
After Maxeon Solar Pte. Ltd. sued Canadian Solar, Inc. for patent infringement, Canadian Solar commenced an inter partes review challenging U.S. Patent No. 8,222,516. The Patent Trial and Appeal Board concluded that Canadian Solar had not shown claim 12 to be unpatentable.
Canadian Solar appealed that determination. While the appeal was pending, Maxeon issued a unilateral covenant not to sue Canadian Solar for infringement and moved to dismiss the appeal as moot. Canadian Solar did not oppose dismissal but requested vacatur of the Board’s ruling; Maxeon opposed vacatur.
The Court’s Holding
In a nonprecedential per curiam order, the Federal Circuit held that Maxeon’s unilateral covenant not to sue rendered Canadian Solar’s appeal moot. Because mootness resulted from the unilateral action of the party that had prevailed before the Board, the court concluded that vacatur was appropriate.
The court dismissed the appeal as moot and vacated the final written decision insofar as it addressed claim 12 of the ’516 patent. It declined to direct the Board to dismiss the petition’s challenge to claim 12 and ordered each party to bear its own costs.
Key Takeaways
- A patent owner’s unilateral covenant not to sue can moot an accused infringer’s appeal from an inter partes review decision.
- When the prevailing party’s unilateral action causes mootness, vacatur of the challenged administrative ruling may be warranted.
- The court vacated only the portion of the Board’s final written decision concerning claim 12 and did not order dismissal of that portion of the IPR petition.
Why It Matters
The order illustrates how a covenant not to sue can end an appellate patent dispute while also eliminating the underlying Board determination that the appellant can no longer challenge. Patent owners considering such covenants should account for the possibility that mooting an appeal will lead to vacatur of a favorable PTAB ruling.