Can’t Be Stopped: Appellants Cannot Dismiss Appeal Days Before a Mandate Issues
In Cisco Systems, Inc. v. K.Mizra LLC, Appeal No. 22-2290, The Federal Circuit denied appellants’ unopposed motion to voluntarily dismiss their appeal where appellants filed the motion after the court’s opinion and days before issuance of a mandate.
Cisco filed, and HPE joined, a petition for inter partes review of a patent owned by K.Mizra. The Board concluded Cisco did not carry its burden of showing a motivation to combine prior art references. Cisco and HPE appealed. The Federal Circuit issued an opinion that vacated and remanded the Board’s determination regarding motivation to combine.
After the Federal Circuit issued the opinion but days before it issued a mandate, Cisco and HPE moved to dismiss their appeal, providing that the motions were unopposed due to settlement. The Federal Circuit invited the PTO to comment. The PTO asked the Federal Circuit to deny the motions because the court had already entered its opinion and judgment and denied rehearing.
The Federal Circuit agreed with the PTO and denied Cisco and HPE’s motions to dismiss the appeal. The court had previously held that, even without a request to vacate an opinion, dismissing an appeal “days before issuance of a mandate, . . . which would result in a modification or vacatur of [the court’s] judgment, is neither required nor a proper use of the judicial system.” In this case, the court found no reason to deviate from that principle. The court further reasoned that “additional consideration of the Director’s unconditional right to intervene . . . generally counsels against granting a motion to dismiss an appeal from the Board after [the Federal Circuit] has already decided the appeal.” The court noted the parties are permitted to seek dismissal at the Board upon the remand.
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