Case: 22-2256 Document: 12 Page: 1 Filed: 01/30/2023
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SHIBUYA KOGYO CO., LTD.,
Appellant
v.
STEUBEN FOODS, INC.,
Appellee
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2022-2256
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/000,686.
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ON MOTION
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Before TARANTO, MAYER, and STOLL, Circuit Judges.
TARANTO, Circuit Judge.
ORDER
Steuben Foods, Inc. moves to dismiss this appeal for
lack of standing. Shibuya Kogyo Co., Ltd. opposes.
Shibuya appeals from the Patent Trial and Appeal
Board’s final decision in this inter partes reexamination,
which related to claims 9 and 20–23 of Steuben’s U.S. Pa-
tent No. 6,481,468. Shibuya has no constitutional standing
Case: 22-2256 Document: 12 Page: 2 Filed: 01/30/2023
2 SHIBUYA KOGYO CO., LTD. v. STEUBEN FOODS, INC.
to challenge the Board’s decision reversing the examiner’s
rejection of those patent claims because the United States
Patent and Trademark Office, in separate proceedings, is-
sued a final certificate cancelling those same claims before
this appeal was filed. See Best Med. Int’l, Inc. v. Elekta
Inc., 46 F.4th 1346 (Fed. Cir. 2022) (holding patentee
lacked standing to appeal Board’s decision when the chal-
lenged claim was finally canceled prior to appeal).
Shibuya argues that it is injured by the Board’s claim
construction, which it contends is likely to govern pending
litigation in which related patents are asserted against it.
But we have previously rejected attempts to establish
standing based solely on concerns that a district court may
later rely on the Board’s claim construction. See id. at 1353
(noting that non-appealable issues and judgments typically
lack preclusive effect). For example, in SkyHawke Tech-
nologies, LLC v. Deca International Corp., 828 F.3d 1373
(Fed. Cir. 2016), we explained that a party would “be able
to appeal any such unfavorable claim construction by the
district court should that situation arise,” and we could not
“foresee how the claim construction reached by the Board”
could satisfy the elements for any future application of is-
sue preclusion. Id. at 1376.
We see no basis for a disposition different from the one
in Best Medical and SkyHawke: dismissal of the appeal.
Shibuya has not shown that the Board’s claim construction
will necessarily govern district court proceedings or that it
will be without the ability to challenge a construction on
appeal in those proceedings. Nor has Shibuya shown that
vacatur is appropriate under United States v. Mun-
singwear, Inc., 340 U.S. 36 (1950), because, as in Best Med-
ical, “this appeal did not become moot during the pendency
of the appeal,” 46 F.4th at 1351; instead, Shibuya’s “prob-
lem is lack of standing at the outset of the appeal,” Apple
Inc. v. Qualcomm Inc., 17 F.4th 1131, 1137 (Fed. Cir. 2021).
Accordingly,
Case: 22-2256 Document: 12 Page: 3 Filed: 01/30/2023
SHIBUYA KOGYO CO., LTD. v. STEUBEN FOODS, INC. 3
IT IS ORDERED THAT:
(1) The motion is granted. The appeal is dismissed.
(2) Each side shall bear its own costs.
FOR THE COURT
January 30, 2023 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
ISSUED AS A MANDATE: January 30, 2023