What happens when a patent expires during proceedings? Dissent brings up "unclean hands"

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In 2017, we affirmed-in-part, vacated-in-part, and remanded the Patent Trial and Appeal Board (Board) decisions in inter partes reexamination proceedings for U.S. Patent Nos. 8,023,290 (’290 patent) and 7,272,021 (’021 patent). Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1312 (Fed. Cir. 2017) (SynQor II). Before the Board issued its remand decisions, the ’021 patent expired. Patent Owner SynQor appeals, asking this court to vacate the Board’s decision rejecting claims 49 and 50 of the ’021 patent pursuant to United States v. Munsingwear, 340 U.S. 36 (1950), whereby an appellate court can vacate a lower court’s or administrative agency’s decision when review of that decision on the merits becomes moot “by the vagaries of circumstance.” U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 25 (1994). Recently, in SynQor, Inc. v. Vicor Corp., 988 F.3d 1341 (Fed. Cir. 2021) (SynQor IV), we granted SynQor’s request for vacatur of a Board decision rejecting claims 34–38 of related U.S. Patent No. 7,072,190 (’190 patent). Because the request for vacatur in this case is materially identical to the request in SynQor IV, we similarly vacate the Board’s remand decision regarding claims 49 and 50 of the ’021 patent.

Judge Lourie dissented:

I respectfully dissent from the vacatur of the Board’s decision rejecting claims 49 and 50. The majority states that this case is “materially indistinguishable” from SynQor IV because the patent in both cases expired before the Board’s appeals process was completed. Majority at 6. I question that conclusion. In SynQor IV, the Board first rejected new claim 34 two years before the patent expired. In contrast, in this case, the patent expired before the Board rejected new claims 49 and 50. That makes a big difference when SynQor comes before us seeking an equitable remedy.

Vacatur is an equitable remedy. See U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 26 (1994); see also 15 James W. Moore et al., Moore’s Federal Practice § 101.97 (Matthew Bender 3d ed. 2021) (“The burden is on the party seeking vacatur to demonstrate equitable entitlement to the remedy.”). And equity requires clean hands. See Gilead Scis, Inc. v. Merck & Co., Inc., 888 F.3d 1231 (Fed. Cir. 2018) (the doctrine of unclean hands “closes the doors of a court of equity to one tainted with inequitableness or bad faith relative to the matter in which he seeks relief”) (quoting Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814–15 (1945)). Here, 13 months had passed during which the ’021 patent appeal was pending before the Board and SynQor did not notify the Board that the patent had expired. It only did so a month after the Board’s decision. That looks suspiciously like a strategic decision to lay low until the decision and, only if one lost, seek vacatur. That is not happenstance; it looks like either gamesmanship or negligence, and rewarding that conduct with vacatur is not equity. The Board was obligated to expand scarce resources in adjudicating the appeal before it, when SynQor could have been upfront with the Board and informed it that, in its view, the appeal was moot. For the above reasons, I dissent from the majority’s decision to vacate a decision that should be affirmed.