Judge Newman's dissent in Sony; did the CAFC issue an advisory opinion?

On an appeal to the CAFC of IPR2016-
00834:


Sony Corp. is the owner of U.S. Patent No. 6,097,676
(“the ’676 patent”). It appeals the Patent Trial and Appeal
Board’s (“Board’s”) final decision in IPR No. 2016-00834.
The Board found claims 5 and 8 of the ’676 patent unpatentable as obvious. We vacate and remand.



Judge Newman dissented:


The threshold question on appellate jurisdiction is
whether there is a live case or controversy sufficient to satisfy Article III. The only patent on appeal, U.S. Patent
No. 6,097,676, expired in August 2017; the IPR petitioner,
ARRIS, declines to defend its PTAB victory; and the parties
have settled the infringement suit in district court. There
is no interest, neither private interest nor public interest,
in the fate of this patent. There appears to be no consequence of either our appellate decision today or the
potential PTAB decision on the remand now ordered by the
court.1 This appeal fails the requirements of Article III.

“No principle is more fundamental to the judiciary’s
proper role in our system of government than the constitutional limitation
of federal-court jurisdiction to actual cases
or controversies.” Raines v. Byrd, 521 U.S. 811, 818 (1997)
(quoting Simon v. E. Ky. Welfare Rights Org., 426 U.S. 26,
37 (1976)). Federal courts are limited to their constitutional authority, and
“[i]f a dispute is not a proper case or
controversy, the courts have no business deciding it, or expounding the law in the course of doing so.”
DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 341 (2006).


Footnote 1 of the dissent:


The PTO Director, intervening “to defend the
Board’s decision,” does not explain the agency’s interest in
further judicial and administrative proceedings on this patent
that expired 20 months ago and is now devoid of controversy. The panel majority’s description of the Director
as a party that “remain[s] adverse,” is not explained.


Creating a necessary record:



A necessary question is whether there remain any consequences of our appellate decision. As the party seeking
judicial review, “[i]t is the responsibility of [Sony] clearly to
allege facts demonstrating that [it] is a proper party to invoke judicial resolution of the dispute and the exercise of
the court’s remedial powers.” Renne v. Geary, 501 U.S. 312,
316 (1991) (internal quotation marks and citation omitted).
Here, appellant Sony must establish its continuing interest
“‘when it seeks review of an agency’s final action in a federal court,’ by creating a necessary record in this court, if
the record before the Board does not” so establish. JTEKT
Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1220 (Fed. Cir.
2018) (quoting Phigenix, Inc. v. Immunogen, Inc., 845 F.3d
1168, 1172 (Fed. Cir. 2017)).


Also



The record contains not even a remote suggestion of
possible future litigation or other potential actions by unidentified acquirers of this expired patent. The panel majority searches for a possible case-or-controversy, proposing
that there may be speculative or unspecified circumstances. Maj. Op. 5 n.1. However, “[w]e presume that federal courts lack jurisdiction unless the contrary appears
affirmatively from the record.” Renne, 501 U.S. at 316 (internal quotation marks omitted) (quoting Bender, 475 U.S.
at 546)). If such possibility indeed exists, it was Sony’s obligation to say so, for the “burden of establishing” that the
requirements of Article III are met is placed on “the party
seeking judicial review.” JTEKT, 898 F.3d at 1220;


Of advisory opinions:


On the record before us, both the court’s decision on
this appeal and our remand for further PTAB proceedings
are devoid of substance and consequence—they thus appear to be advisory. And “[a]s is well known the federal
courts established pursuant to Article III of the Constitution do not render advisory opinions.” United Pub. Workers
of Am. (C.I.O.) v. Mitchell, 330 U.S. 75, 89 (1947).