United States Court of Appeals for the
Federal Circuit
__________________________
THE OHIO WILLOW WOOD COMPANY,
Plaintiff/Counterclaim Defendant-Appellant,
v.
THERMO-PLY, INC.,
Defendant/Counterclaimant-Appellee,
and
COASTAL LINERS, LLC,
Counterclaimant-Appellee.
__________________________
2010-1119
__________________________
Appeal from the United States District Court for the Eastern
District of Texas in case no. 07-CV-0274, Judge Ron Clark.
__________________________
THE OHIO WILLOW WOOD COMPANY,
Plaintiff/Counterclaim Defendant-Appellee,
v.
THERMO-PLY, INC.,
Defendant/Counterclaimant-Appellant,
and
COASTAL LINERS, LLC,
Counterclaimant.
OHIO WILLOW v. THERMO-PLY 2
__________________________
2010-1269
__________________________
Appeal from the United States District Court for the Eastern
District of Texas in case no. 07-CV-0274, Judge Ron Clark.
__________________________
ON MOTION
__________________________
Before RADER, Chief Judge, NEWMAN, and MOORE, Circuit
Judges.
Order for the court filed by Chief Judge RADER. Additional views
filed by Circuit Judge,
NEWMAN. Concurrence filed by Circuit Judge,
MOORE.
RADER, Chief Judge.
__________________________
JEFFREY S. STANDLEY, Standley Law Group LLP, of Dublin,
Ohio, and RICHARD E. FEE, Fee & Jeffries, P.A. of Tampa, Florida,
filed a joint motion to remand for plaintiff/counterclaim defen-
dant-appellant, defendant/counterclaimant-appellee and counter-
claimant-appellee. With them on the motion were JAMES L.
KWAK, F. MICHAEL SPEED, JR. and MICHAEL STONEBROOK of
Dubline, Ohio, and KATHLEEN M. WADE, of Tampa, Florida.
__________________________
ORDER
3 OHIO WILLOW v. THERMO-PLY
The parties jointly move for remand of these appeals. * Alps
South, LLC moves for leave to file a brief amicus curiae in 2010-
1119 or in the alternative for leave to intervene and oppose the
motion to remand. Alps South also moves for leave to file an
opposition to the motion to remand.
We remand for the limited purpose of the district court’s
consideration of the parties' motion for vacatur. We retain juris-
diction so that any of the parties may seek appellate review by
notifying the Clerk of the Court within thirty days of entry of the
district court’s decision on remand.
The appeals are held in abeyance pending the resolution of
the motion for vacatur by the district court. The parties should
promptly inform this court of the district court's ruling on the
motion pursuant to Fed. R. App. P. 12.1(b) and should propose
how they believe the appeals should proceed in light of the dis-
trict court's ruling.
Accordingly,
IT IS ORDERED THAT:
(1) The motions to remand in 2010-1119, -1269 are granted to
the limited extent explained above. This court retains jurisdic-
tion over the appeals at this time.
(2) The court's June 14, 2010 order dismissing 2010-1269 is
vacated, the mandate in 2010-1269 is recalled, and the appeal is
reinstated for purposes of the limited remand.
(3) Alps South's motions are denied.
* In their motion to remand in 2010-1269, the parties also
request that 2010-1269 be dismissed. We assume that this re-
quest is erroneous, as it appears to be the parties' request that
the "actions" be remanded. We note that 2010-1269 was dis-
missed on June 14, 2010 for failure to file an opening brief. We
reinstate that appeal so that the entire matter can be remanded
for the limited purpose of the district court's consideration of the
parties' motion for vacatur.
OHIO WILLOW v. THERMO-PLY 4
FOR THE COURT
JANUARY 4, 2011 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
United States Court of Appeals
for the Federal Circuit
__________________________
THE OHIO WILLOW WOOD COMPANY,
Plaintiff/Counterclaim Defendant-Appellant,
v.
THERMO-PLY, INC.,
Defendant/Counterclaimant-Appellee,
and
COASTAL LINERS, LLC,
Counterclaimant-Appellee.
__________________________
2010-1119
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in case No. 07-CV-0274, Judge
Ron Clark.
__________________________
THE OHIO WILLOW WOOD COMPANY,
Plaintiff/Counterclaim Defendant-Appellee,
v.
THERMO-PLY, INC.,
Defendant/Counterclaimant-Appellant,
and
OHIO WILLOW v. THERMO-PLY 2
COASTAL LINERS, LLC,
Counterclaimant.
__________________________
2010-1269
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in case No. 07-CV-0274, Judge
Ron Clark.
NEWMAN, Circuit Judge, additional views.
I join the court’s Order to remand to the district
court for consideration of the motion for vacatur. I write
separately to point out that the views of our colleague in
separate concurrence are not the court’s remand order. I
am concerned with the apparent bias impressed upon the
district court’s action on remand.
We have remanded so that the court that rendered
the decision can decide whether to vacate it, based on our
conclusion that the district court is in the better position
to make that ruling, indeed to consider all of the legal and
equitable considerations as may be brought to its atten-
tion by those favoring and opposing the motion. Our
remand should be unencumbered by even the appearance
of prejudgment or of the weight to be given to various
considerations. Indeed, the issues on which our colleague
in concurrence offers judicial advice are more complex
than is here recognized.
This court does not have a complete picture of the
circumstances of this case – that is the reason for the
remand. 1 Whether a district court chooses to vacate its
1 My colleague in “concurrence” offers the foot-
note proposition that “[t]here will be no opposing voice
3 OHIO WILLOW v. THERMO-PLY
own decision in a particular case is a matter of case-
specific discretion. I do not endorse the proffer of judicial
advice on selected issues, thereby placing an appellate
thumb on the scale of the remand order before it reaches
its destination.
when the parties move for vacatur because both parties
benefit.” This is inapplicable, for there has already been a
request for intervention of a third party, Alps South LLC.
Motion of Amicus Curiae, Alps South, LLC to File Brief In
Support Of Appellee, Thermo-Ply, Inc., Or In The Alterna-
tive To Intervene In This Appeal (July 26, 2010). FRCP
24(b)(1)(B) (“On timely motion, the court may permit
anyone to intervene who: . . . (B) has a claim or defense
that shares with the main action a common question of
law or fact.”). Alps South argues against vacatur, citing a
pending suit against it on the same patent. Indeed, the
existence of such additional complexity influenced this
court’s decision to remand the motion to the district court.
United States Court of Appeals
for the Federal Circuit
__________________________
THE OHIO WILLOW WOOD COMPANY,
Plaintiff/Counterclaim Defendant-Appellant,
v.
THERMO-PLY, INC.,
Defendant/Counterclaimant-Appellee,
and
COASTAL LINERS, LLC,
Counterclaimant-Appellee.
__________________________
2010-1119
__________________________
Appeal from the United States District Court for the Eastern
District of Texas in case no. 07-CV-0274, Judge Ron Clark.
__________________________
THE OHIO WILLOW WOOD COMPANY,
Plaintiff/Counterclaim Defendant-Appellee,
v.
THERMO-PLY, INC.,
Defendant/Counterclaimant-Appellant,
and
COASTAL LINERS, LLC,
Counterclaimant.
__________________________
2010-1269
__________________________
Appeal from the United States District Court for the Eastern
District of Texas in case No. 07-CV-0274, Judge Ron Clark.
Before RADER, Chief Judge, NEWMAN and MOORE, Circuit Judges.
MOORE, Circuit Judge, concurring.
I concur in the order to remand to allow the district court to
consider vacatur. This remand should not, however, be construed
as an imprimatur on the joint vacatur motion. The Supreme
Court in U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership,
513 U.S. 18, 29 (1994), held that “mootness by reason of
settlement does not justify vacatur of a judgment under review.”
The Court made clear that vacatur was an “extraordinary remedy”
which petitioner would have to show “equitable entitlement to.”
Id. at 26. Only in “exceptional circumstances” should a district
court grant vacatur at the request of the litigants. Id. at 29. The
Court explained that “[j]udicial precedents are presumptively
correct and valuable to the legal community as a whole. They are
not merely the property of private litigants and should stand
unless a court concludes the public interest would be served by a
vacatur.” Id. at 26 (citations omitted). In a patent case, especially
where a patent has been invalidated, the public interest is
overwhelming. See Cardinal Chem. Co. v. Morton Int’l, Inc., 508
U.S. 83, 100 (1993) (holding that there is “a strong public interest
in the finality of judgments in patent litigation” and especially in
validity determinations). In fact, in Cardinal Chemical, the
2010-1119, -1269 2
Supreme Court held the public interest was so high that the
Federal Circuit must consider a validity determination on appeal,
even if the court concludes that the defendant does not infringe
the patent at issue. Id. at 101–02. This is because patents are
public rather than private rights and involve extremely high
stakes for the litigants. 1
In this case, for example, the patentee has already sued
another party on the patent in question. If the decision that
invalidated the patent at issue is not vacated, then the patentee
will be collaterally estopped from asserting this patent in this and
other suits, thereby saving courts and litigants the time and
money it takes to proceed with patent litigation. Patent
litigations are among the longest, most time-consuming types of
civil actions. As of 2009, 384 patent cases had been pending in the
district courts for three years or more. 2009 Admin. Off. U.S. Cts.
Ann. Rep., at Table S-11. Moreover, the costs of patent litigation
are enormous with an average patent case costing upwards of $3
million for each side. See American Intellectual Property Law
1 The public rights are particularly vulnerable when
considering vacatur following settlement. There will be no
opposing voice when the parties move for vacatur because both
parties benefit. Aside from the settlement itself, the patent owner
retains a patent that has been adjudged invalid and the defendant
now has a license to a patent that the patent owner may assert
against the defendant’s competitors.
2010-1119, -1269 3
Association, Report of the Economic Survey 2009 I-129 (2009). If
the district court vacates its invalidity judgment then other
defendants and other district courts will be forced to proceed with
infringement suits, as there would likely be no collateral estoppel.
Even if there were no other suits pending, these concerns should
still weigh heavily against vacatur, as the only reason the
patentee would want an invalidity judgment vacated is to
potentially enforce the patent against others.
In this case, the settlement agreement covers not only the
case on appeal to us, but three additional litigations between the
parties involving three different patents. This case is properly
remanded to the district court because the district court is in the
best position to determine whether the fact that this settlement
will end four litigations between the parties is sufficiently
“exceptional” to justify potentially forcing other defendants to
litigate or license the patent the district court has already held
invalid. See U.S. Bancorp, 513 U.S. at 29.
2010-1119, -1269 4