CAFC addresses a "“Request to Change the Real-Party-in-Interest from Third-Party Requestor" and FRAP 43 in Mojave Desert case
The outcome was that the PTAB got the case wrong:
We therefore conclude that Mojave is the successor-ininterest to U.S.A. Dawgs, that it has standing to pursue this challenge to the ’789 patent, and that the Board erred in not substituting Mojave for U.S.A. Dawgs as the thirdparty requester during the inter partes reexamination.
Under these circumstances, we think that no useful purpose would be served by remanding to the Board to add Mojave as the requester and that the appropriate course is to grant the motion to substitute on appeal pursuant to Rule 43(b) of the Federal Rules of Appellate Procedure. See Mullaney v. Anderson, 342 U.S. 415, 417 (1952);13 see also Newman-Green, Inc. v. Alfonzo-Larrain, 490 U.S. 826, 833–34 (1989) (reaffirming Mullaney); Carlton v. Baww, Inc., 751 F.2d 781, 789 (5th Cir. 1985) (permitting amendment to a pleading at the appellate court because “it appear[ed] plainly from [the] record that jurisdiction exists,” and as a result, “it best serve[d] the interests of justice to grant the motion for leave to amend [in the appellate court], without requiring a perfunctory remand for that purpose” (citations omitted)).
Of the motion to substitute:
The motion to substitute is made pursuant to Rule 43(b) of the Federal Rules of Appellate Procedure, which provides that, “[i]f a party needs to be substituted for any reason other than death, the procedure prescribed in Rule 43(a) applies.” Fed. R. App. P. 43(b).6 Substitution [under Rule 43(b)] may . . . be necessary when a party is incapable of continuing the suit, such as . . . when a transfer of interest in the company or property involved in the suit has occurred[] or when the focus of the litigation has shifted, making another entity the real party in interest. 21 James W. Moore et al., Moore’s Federal Practice – Civil § 343.12 (2020).
Of a "protective notice of appeal":
Crocs also argues that Mojave failed to file a notice of appeal from the Board’s decision. Mojave could not file a notice of appeal because it had not been added as a party by the Board to the inter partes reexamination proceeding. Under Nevada law, however, U.S.A. Dawgs retained the ability to file a protective notice of appeal12 and did so on November 8, 2019. That was sufficient to confer jurisdiction on this court. Other courts have apparently reached similar conclusions. See, e.g., Barger v. City of Cartersville, 348 F.3d 1289, 1291–93 (11th Cir. 2003) (determining that the notice of appeal filed by transferor was sufficient), overruled on other grounds by Slater v. U.S. Steel Corp., 871 F.3d 1174 (11th Cir. 2017); ELCA Enters., Inc. v. Sisco Equipment Rental & Sales, Inc., 53 F.3d 186, 190–91 (8th Cir. 1995) (permitting party denied substitution before the district court to appeal despite transferring all interest in lawsuit).
We therefore conclude that Mojave is the successor-ininterest to U.S.A. Dawgs, that it has standing to pursue this challenge to the ’789 patent, and that the Board erred in not substituting Mojave for U.S.A. Dawgs as the thirdparty requester during the inter partes reexamination.
Under these circumstances, we think that no useful purpose would be served by remanding to the Board to add Mojave as the requester and that the appropriate course is to grant the motion to substitute on appeal pursuant to Rule 43(b) of the Federal Rules of Appellate Procedure. See Mullaney v. Anderson, 342 U.S. 415, 417 (1952);13 see also Newman-Green, Inc. v. Alfonzo-Larrain, 490 U.S. 826, 833–34 (1989) (reaffirming Mullaney); Carlton v. Baww, Inc., 751 F.2d 781, 789 (5th Cir. 1985) (permitting amendment to a pleading at the appellate court because “it appear[ed] plainly from [the] record that jurisdiction exists,” and as a result, “it best serve[d] the interests of justice to grant the motion for leave to amend [in the appellate court], without requiring a perfunctory remand for that purpose” (citations omitted)).
Of the motion to substitute:
The motion to substitute is made pursuant to Rule 43(b) of the Federal Rules of Appellate Procedure, which provides that, “[i]f a party needs to be substituted for any reason other than death, the procedure prescribed in Rule 43(a) applies.” Fed. R. App. P. 43(b).6 Substitution [under Rule 43(b)] may . . . be necessary when a party is incapable of continuing the suit, such as . . . when a transfer of interest in the company or property involved in the suit has occurred[] or when the focus of the litigation has shifted, making another entity the real party in interest. 21 James W. Moore et al., Moore’s Federal Practice – Civil § 343.12 (2020).
Of a "protective notice of appeal":
Crocs also argues that Mojave failed to file a notice of appeal from the Board’s decision. Mojave could not file a notice of appeal because it had not been added as a party by the Board to the inter partes reexamination proceeding. Under Nevada law, however, U.S.A. Dawgs retained the ability to file a protective notice of appeal12 and did so on November 8, 2019. That was sufficient to confer jurisdiction on this court. Other courts have apparently reached similar conclusions. See, e.g., Barger v. City of Cartersville, 348 F.3d 1289, 1291–93 (11th Cir. 2003) (determining that the notice of appeal filed by transferor was sufficient), overruled on other grounds by Slater v. U.S. Steel Corp., 871 F.3d 1174 (11th Cir. 2017); ELCA Enters., Inc. v. Sisco Equipment Rental & Sales, Inc., 53 F.3d 186, 190–91 (8th Cir. 1995) (permitting party denied substitution before the district court to appeal despite transferring all interest in lawsuit).
posted by Lawrence B. Ebert at 9:27 AM
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