Illinois Tool Works, Inc. v. Termax Co.

Case: 23-1252 Document: 30 Page: 1 Filed: 03/08/2023
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ILLINOIS TOOL WORKS, INC.,
Appellant
v.
TERMAX COMPANY,
Cross-Appellant
______________________
2023-1252, 2023-1254
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00724.
______________________
ON MOTION
______________________
Before DYK, REYNA, and CHEN, Circuit Judges.
DYK, Circuit Judge.
ORDER
Illinois Tool Works, Inc. moves to voluntarily dismiss
its appeal, No. 2023-1252, and to dismiss Termax Com-
pany’s cross-appeal, No. 2023-1254. Termax opposes dis-
missal of its cross-appeal. We grant both motions.
Case: 23-1252 Document: 30 Page: 2 Filed: 03/08/2023
2 ILLINOIS TOOL WORKS, INC. v. TERMAX CO.
Termax appeals from the Patent Trial and Appeal
Board’s final written decision in this inter partes review,
which agreed with Termax that all challenged claims of Il-
linois Tool Works’ U.S. Patent No. 10,683,882 are un-
patentable. We have employed the familiar rule that “the
prevailing party in a lower tribunal cannot ordinarily seek
relief in the appellate court” to appeals from the Board.
SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373,
1375 (Fed. Cir. 2016) (citation omitted). We see nothing
that warrants departing from that rule here.
In opposing dismissal, Termax contends that the Board
erred in its construction of certain claim limitations that
have also been incorporated into Illinois Tool Works’ new
patent. Termax hopes that a favorable decision on its claim
construction arguments here will collaterally estop Illinois
Tool Works from asserting those newly issued claims. But
in SkyHawke, we rejected a similar attempt to appeal from
a Board’s claim construction when the appellant did “not
seek to alter the judgment of the Board.” Id. There, as
here, Termax “is merely trying to preempt an unfavorable
outcome” as to some other potential proceeding regarding
Illinois Tool Works’ new patent “that may or may not arise
in the future,” and, if such an outcome does arise, Termax
may appeal “at that time.” Id. at 1377.
Accordingly,
IT IS ORDERED THAT:
(1) The motions are granted, and the appeals are dis-
missed.
Case: 23-1252 Document: 30 Page: 3 Filed: 03/08/2023
ILLINOIS TOOL WORKS, INC. v. TERMAX CO. 3
(2) Each side shall bear its own costs.
FOR THE COURT
March 8, 2023 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
ISSUED AS A MANDATE (as to Appeal No. 2023-1252
only): March 8, 2023