Flfmc, Llv. v. Wham-O, Inc.

NOTE: This order is nonprecedential
United States Court of Appeals
for the Federal Circuit
__________________________
FLFMC, LLC,
Plaintiff-Appellant,
v.
WHAM-O, INC.,
Defendant-Appellee.
v.
UNITED STATES,
Intervenor.
__________________________
2011-1067
__________________________
Appeal from the United States District Court for the
Western District of Pennsylvania in case no. 01-CV-0435,
Judge Arthur J. Schwab.
__________________________
Decided: October 19, 2011
__________________________
Before LINN, DYK, and PROST, Circuit Judges.
PER CURIAM.
ORDER
2 FLFMC v. WHAM-O
FLFMC, LLC (“FLFMC”) appealed from a decision of
the United States District Court for the Western District
of Pennsylvania dismissing its complaint, under 35 U.S.C.
§ 292, for lack of Article III standing. Wham-O, Inc.
(“Wham-O”) asserted alternative grounds for affirmance,
including challenges to the constitutionality of § 292(b)
under the Take Care Clause of Article II § 3 and under
the Appointments Clause of Article II § 2. This court
heard oral argument on July 7, 2011.
On September 16, 2011, the President signed into law
the Leahy-Smith America Invents Act, H.R. 1249, 112th
Cong. (1st Sess. 2011), amending 35 U.S.C. § 292 to
eliminate the qui tam provision on which this action was
predicated. This act included the following text regarding
the effective date of this provision: “The amendments
made by this subsection shall apply to all cases, without
exception, that are pending on, or commenced on or after,
the date of the enactment of this Act.” Leahy-Smith
America Invents Act, Pub. L. No. 112-29 § 16(b)(4), 125
Stat. 284, 329 (2011) (“the Act”). Accordingly, on Septem-
ber 16, 2011, the court ordered the parties to advise the
court of the effect of this legislation on the status of the
case.
On September 30, 2011, FLFMC, Wham-O, Inc., and
the United States filed a joint-response to the court’s
order. In this response, the parties agreed that the Act
rendered this appeal and the standing determination of
the district court moot. Accordingly, they requested the
court to vacate the district court’s decision dismissing the
case for lack of standing and to dismiss this appeal.
In light of the amendments to 35 U.S.C. § 292 and the
parties’ agreement on the effect of the Act under the facts
and circumstances of this case, this appeal is dismissed as
FLFMC v. WHAM-O 3
moot. 1 Because the circumstance that rendered this case
moot was the amendment of § 292(b) by Congress, over
which the parties had no control, it is appropriate not only
to dismiss the appeal but to vacate the district court’s
determination as well. 28 U.S.C. § 2106; see Alvarez v.
Smith, 130 S. Ct. 576, 581 (2009) (“Applying this statute,
we normally do vacate the lower court judgment in a moot
case because doing so ‘clears the path for future relitiga-
tion of the issues between the parties,’ preserving ‘the
rights of all parties,’ while prejudicing none ‘by a decision
which . . . was only preliminary.’” (citing United States v.
Munsingwear, Inc., 340 U.S. 36, 40 (1950))); Tafas v.
Kappos, 586 F.3d 1369, 1371 (Fed. Cir. 2009) (“Vaca-
tur . . . is appropriate if the mootness arises from external
causes over which the parties have no control” (citing U.S.
Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 25
(1994))).
Accordingly,
IT IS ORDERED THAT:
(1) The district court’s decision dismissing the case
for lack of standing is vacated as moot.
(2) The case is remanded with instructions to dis-
miss.
(3) This appeal is dismissed.
(4) Each party shall bear its own costs.
1 The parties do not challenge, and this court does
not address, the constitutionality of the retroactive appli-
cation of the amendments to § 292.
4 FLFMC v. WHAM-O
FOR THE COURT,
October 19, 2011 /s/JanHobaly______
Date Jan Horbaly
Clerk
cc: David G. Oberdick, Esq.
Andrew J. Dhuey, Esq.
Douglas N. Letter, Esq.