CAFC shuffles from mootness to lack of jurisdiction

The technology involved card shufflers for gaming:



SHFL supplies gaming products, such as automatic
card shufflers used in casinos. It owns the ’935 and ’982
patents, which share a common specification that discloses
card shuffling devices and methods of randomizing
cards using the shuffling devices. DigiDeal similarly
manufactures and markets gaming equipment, including
an automatic single deck card shuffler known as the
DigiShuffleTM (DigiShuffle).



An issue was the distinction in dismissal for mootness vs.
lack of jurisdiction:



Suits based on cancelled claims must be dismissed for
lack of jurisdiction, however. Foster v. Carson, 347 F.3d
742, 745 (9th Cir. 2003) (“Mootness is a jurisdictional
issue, and federal courts have no jurisdiction to hear a
case that is moot, that is, where no actual or live controversy
exists. If there is no longer a possibility that an
appellant can obtain relief for his claim, that claim is
moot and must be dismissed for lack of jurisdiction.”
(citations and quotation marks omitted)); see also Target
Training Int’l, Ltd. v. Extended Disc N. Am., Inc., 645 F.
App’x 1018, 1023 (Fed. Cir. 2016) (upholding the district
court’s dismissal for lack of jurisdiction because Fresenius
rendered the suit moot as to the claims cancelled after
reexamination). Accordingly, we vacate the entry of
summary judgment as to the cancelled claims of the ’935
patent, and remand for the district court to dismiss the
claims from the action for lack of jurisdiction.



AND


SHFL Entertainment, Inc. sued DigiDeal Corporation
in the U.S. District Court for the District of Nevada for
infringement of U.S. Patent Nos. 6,651,982 and 7,523,935.
While the litigation was pending, the U.S. Patent and
Trademark Office reexamined the patents, cancelling all
originally asserted claims of the ’935 patent and confirming
a new claim as patentable, and confirming all originally
asserted claims of the ’982 patent in their amended
form and two new claims as patentable. Based on the
results of the reexaminations, the court found the entire
suit moot and entered summary judgment against SHFL.
The district court correctly found the case moot as to
the cancelled claims of the ’935 patent. Suits based on
cancelled claims must be dismissed for lack of jurisdiction,
however. We thus vacate the entry of summary judgment
as to the cancelled claims, and remand for the court to
dismiss that part of the action for lack of jurisdiction.
In addition, the court failed to determine whether the
new and amended claims that emerged from the reexaminations
of the two patents are substantially identical to
the claims originally asserted in the action. We therefore
vacate the grant of summary judgment as to those claims,
and remand for the court to make that determination.