Monday, September 09, 2019

PTAB decision vacated in Valspar

From the case:

Vacatur is an equitable remedy. Bancorp,
513 U.S. at 25. The Board’s interpretation of our mandate
produced an inequitable result. The ordered vacatur was
designed to protect the challenger from being forced to acquiesce to an unreviewable adverse ruling by the Board.
But by effectively canceling all the challenged claims, the
Board’s approach unfairly converted the vacatur shield
into a sword for the challenger. That is an inequitable result—especially
here, where the Board previously determined that the challenged claims are not invalid.

Had we intended such an incongruous result, we would
have made that intent explicit in our opinion. The Board
should have interpreted the scope of the vacatur based on
the context provided by this court’s opinion. See Laitram,
115 F.3d at 952 (consulting opinion to ascertain intended
effect of mandate). Our opinion did not meaningfully distinguish between the Board’s decisions and the examiner’s
decisions. Neither party asked this court for the relief the
Board understood this court to have granted. Furthermore, the cases cited in this court’s opinion and by the parties stand for the proposition of vacating the whole case
below, not a piecemeal approach. See, e.g., Bancorp,
513 U.S. at 21. With this context, it was clear that this
court’s intent was to nullify the entire inter partes reexamination without any collateral effect on other litigation. See
Munsingwear, 340 U.S. at 41 (endorsing procedure that
prevents “a judgment, unreviewable because of mootness,
from spawning any legal consequences”).
PPG argues that had we intended to vacate the entire
Patent Office proceeding, we would have had to “vacate the
judgment below and remand with a direction to dismiss,”
as the Supreme Court stated in Munsingwear.
See id. at 39. We do not agree. See Bancorp, 513 U.S. at 22
(“[V]acatur ‘clears the path for future relitigation of the issues between the parties and eliminates a judgment.’” (emphasis added) (quoting Munsingwear, 340 U.S. at 40));
Laitram, 115 F.3d at 951 (“[W]hile this court could have remanded with explicit instructions . . . the failure to do so is
not dispositive.”). Other appellate courts have used similar
language to ours to dispose of the entire proceeding without


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