NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PPG INDUSTRIES, INC.,
Appellant
v.
VALSPAR SOURCING, INC.,
Appellee
______________________
2016-1406, 2016-1409
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
95/001,950, 95/001,951.
______________________
Decided: February 9, 2017
______________________
EDWARD ANTHONY FIGG, Rothwell, Figg, Ernst &
Manbeck, P.C., Washington, DC, argued for appellant.
Also represented by RACHEL ECHOLS.
MATTHEW A. SMITH, Turner Boyd LLP, Redwood City,
CA, argued for appellee. Also represented by ESHA
BANDYOPADHYAY, KAREN IRENE BOYD.
______________________
Before NEWMAN, CHEN, and STOLL, Circuit Judges.
2 PPG INDUSTRIES, INC. v. VALSPAR SOURCING, INC.
NEWMAN, Circuit Judge.
These consolidated appeals arise from final decisions
by the Patent Trial and Appeal Board (PTAB) on inter
partes reexaminations of two patents, in which there was
no pending district court litigation at the time the reex-
aminations were initiated and decided. The reexamina-
tion requestor (PPG) appealed to this court in accordance
with 35 U.S.C. §§ 141 and 315 (pre-AIA), and the prevail-
ing party (the Patent Owner, Valspar) took the position
that PPG had no standing to appeal the PTAB decisions
because there was no Article III case or controversy.
Valspar thereafter filed an infringement suit on related
patents in the Minnesota District Court, but argues that
Article III standing must exist at the time of filing the
appeal of the PTAB decisions.
The panel requested additional briefing, and such
briefing was duly received from both parties on November
15, 2016. With its brief, Valspar included a unilateral
Covenant Not To Sue with respect to the two patents that
are the subject of the PTAB decisions:
[Valspar] covenant[s] not to sue PPG Industries,
Inc. or any of its subsidiaries or customers (collec-
tively, “PPG”) for infringement of any claim of
[U.S. Patent No. 7,592,047] or [U.S. Patent No.
8,092,876] as of the date of this Covenant Not To
Sue based on PPG’s manufacture, importation,
use, sale and/or offer for sale of any currently ex-
isting products or use of methods and of prior ex-
isting products or prior use of methods. 1
Letter from Appellee Valspar Sourcing, Inc., Ex. 5, Nov.
15, 2016, Dkt. 39. Valspar stated that it maintained its
position that PPG does not have standing to appeal, but
1 Signed for Valspar Sourcing, Inc. and The Valspar
Corporation.
PPG INDUSTRIES, INC. v. VALSPAR SOURCING, INC. 3
that whatever our ruling on standing, PPG’s appeal had
become moot as a result of the Covenant Not To Sue. In
view of the concurrent filings and the unilateral nature of
the covenant, we requested and received additional brief-
ing directed to the question of mootness and vacatur.
We conclude that PPG did have standing to file this
appeal, but that the controversy as to the patented subject
matter is mooted by the Covenant Not To Sue. According-
ly, we vacate the decisions of the Patent Trial and Appeal
Board, and dismiss this appeal.
I
STANDING
The evidence presented by PPG demonstrates that it
possessed more than a “general grievance concerning”
these patents, sufficient to show “a particularized, con-
crete interest in the patentability” of the subject matter,
as discussed in Consumer Watchdog v. Wisconsin Alumni
Research Foundation, 753 F.3d 1258, 1263 (Fed. Cir.
2014). The evidence shows that: (1) by the time PPG filed
its notice of appeal in this case, it had already launched a
commercial can-interior coating for the beverage can
industry; 2 and (2) PPG had received at least one inquiry
from a customer suggesting that Valspar intended to
pursue infringement litigation against PPG related to its
can-interior coating. 3 At a minimum, this evidence estab-
lishes that PPG had a legitimate concern that its manu-
facture and sale of its can-interior coating would draw an
infringement action by Valspar. PPG’s concern proved
warranted when Valspar subsequently filed an infringe-
ment action on related patents. See Valspar Corp. v. PPG
2 Letter from Appellant PPG Industries, Inc., Ex. B,
¶ 2, Nov. 15, 2016, Dkt. 40.
3 Id. at Ex. A, ¶¶ 2–3.
4 PPG INDUSTRIES, INC. v. VALSPAR SOURCING, INC.
Indus., Inc., No. 0:16-cv-01429 (D. Minn. filed May 23,
2016).
PPG’s standing thus differs from the scenario we
faced in Consumer Watchdog. Unlike Consumer Watch-
dog, PPG is and was “engaged in . . . activity involving
[the patented subject matter] that could form the basis for
an infringement claim,” and has “other connection[s] to
the [patents] or the claimed subject matter,” Consumer
Watchdog, 753 F.3d at 1261, sufficient to “have a particu-
larized, concrete stake in the outcome of the reexamina-
tion,” id. at 1262. This stake is enhanced by the “estoppel
provisions contained within the inter partes reexamina-
tion statute.” Id. This is sufficient to establish PPG’s
standing to appeal the Board’s decision.
PPG also stresses the statutory appeal paths for judi-
cial review of PTAB decisions. It is unlikely that the
legislative intent was, by silence, to limit appeals from
PTAB decisions to parties then in litigation in the district
court. In any event, as we recognized in Consumer
Watchdog, although the immediacy and redressability
requirements for Article III standing can be relaxed when
Congress accords a procedural right to a litigant—e.g., the
right to appeal an administrative decision—the “require-
ment of injury in fact is a hard floor of Article III jurisdic-
tion that cannot be removed by statute.” Id. at 1261
(quoting Summers v. Earth Island Inst., 555 U.S. 488, 497
(2009)).
II
MOOTNESS
We conclude that Valspar’s Covenant Not To Sue, alt-
hough tardily and unilaterally provided, has mooted these
proceedings on appeal. The Court has made clear that
“[i]f a judgment has become moot, this Court may not
consider its merits, but may make such disposition of the
whole case as justice may require.” Walling v. James V.
PPG INDUSTRIES, INC. v. VALSPAR SOURCING, INC. 5
Reuter, Inc., 321 U.S. 671, 677 (1944) (citing United States
v. Hamburg-Amerikanische Packetfahrt-Actien Gesell-
schaft, 239 U.S. 466, 477–478 (1916); Heitmuller v. Stokes,
256 U.S. 359, 362–363 (1921); Brownlow v. Schwartz, 261
U.S. 216, 218 (1923)). The breadth of Valspar’s Covenant
Not To Sue, absolving PPG (and its subsidiaries and
customers) of any possible infringement of the subject
matter of these patents, necessitates our conclusion that
the case is moot. See Already, LLC v. Nike, Inc., 133
S. Ct. 721, 728–29 (2013) (affirming dismissal of case as
moot where covenant not to sue left it “hard to imagine a
scenario that would potentially infringe [Nike’s trade-
mark] and yet not fall under the Covenant” (alteration in
original) (citation omitted)); Powell v. McCormack, 395
U.S. 486, 496 (1969) (“Simply stated, a case is moot when
the issues presented are no longer ‘live’ or the parties lack
a legally cognizable interest in the outcome.”).
It was Valspar’s unilateral action as prevailing party
that resulted in the mootness of these appeals. “A party
who seeks review of the merits of an adverse ruling, but is
frustrated by the vagaries of circumstance, ought not in
fairness be forced to acquiesce in the judgment. The same
is true when mootness results from unilateral action of
the party who prevailed below.” U.S. Bancorp Mortg. Co.
v. Bonner Mall P’ship, 513 U.S. 18, 25 (1994) (footnote
and citations omitted); accord Hamburg-Amerikanische,
239 U.S. at 478 (“[T]he ends of justice exact that the
judgment below should not be permitted to stand when,
without any fault of the [petitioner], there is no power to
review it upon the merits.”). Under these circumstances,
we conclude that vacatur would be “most consonant to
justice.” U.S. Bancorp, 513 U.S. at 24 (quoting Hamburg-
Amerikanische, 239 U.S. at 478).
6 PPG INDUSTRIES, INC. v. VALSPAR SOURCING, INC.
CONCLUSION
The Final Decisions of the PTAB in Reexaminations
Nos. 95/001,950 and 95/001,951 are VACATED, and
appeals No. 16-1406 and 16-1409 are DISMISSED.
COSTS
Taxable costs in favor of PPG.