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If you don't appeal an issue from an adverse judgment, are you going to be bound by the decision on that issue in future cases? This can often be an important question to consider when deciding whether and what issues to appeal. But sometimes, the chance to appeal to avoid any possible issue preclusive effect has already passed because of earlier events, as this week's case of the week illustrates.

Case of the (recent) week: Best Medical International, Inc. v. Elekta Inc., No. 21-2099

Panel: Judges Hughes, Linn, and Stoll, with Judge Stoll writing the opinion

You should read this case if: you have a matter involving issue preclusion

Parallel proceedings on the same patent have been commonplace since Congress adopted the America Invents Act more than a decade ago. In this week's case, those parallel proceedings were both before the Patent Office—patent owner Best Medical faced simultaneous challenges to its cancer radiation treatment patent in an ex parte reexamination and multiple inter partes reviews. The examiner in the reexam rejected claim 1 of the patent for statutory and obviousness-type double patenting. Best Medical responded by canceling claim 1, although instead of filing a statutory disclaimer Best Medical merely chose not to respond to the substance of the examiner's rejection. After the examiner's rejection, the Board in the IPRs also addressed claim 1's patentability. The Board thought that was the proper course because the reexam cancellation of claim 1 was not yet completely final. And on the merits, the Board found that claim 1 was unpatentable for obviousness. It entered a final written decision cancelling that and several other challenged claims.

On appeal, the Federal Circuit rejected Best Medical's argument that the Board had no authority to address claim 1 after the examiner's rejection in the reexam. Because Best Medical had not filed a statutory disclaimer, the Federal Circuit agreed that the reexam cancellation of claim 1 was not yet final at the time the Board entered its final written decision. Indeed, because of that non-finality, the Federal Circuit reasoned that the Board was obligated to address claim 1 in its final written decision—the Supreme Court's decision in SAS required the Board to "address every claim the petitioner has challenged" and that was still pending at the time of the Board's decision.

The Federal Circuit also rejected Best Medical's request to vacate the Board's decision on claim 1 under the Supreme Court's decision in United States v. Munsingwear, Inc. Under Munsingwear, appellate courts may vacate decisions that become moot while a case is pending on appeal so that the relevant issues can be preserved for "future litigation." The Federal Circuit held that Munsingwear was inapplicable because claim 1 was finally cancelled before Best Medical filed its notice of appeal. After the IPR decision but before filing a notice of appeal, Best Medical had appealed the examiner's rejections in the reexam to the Board but had not appealed the rejection of claim 1, making claim 1's cancellation final. Because the cancellation of claim 1 became final before Best Medical filed its notice of appeal, "there was no case or controversy regarding claim 1's patentability at th[e] time" the notice was filed. Best Medical thus lacked standing to appeal to the Federal Circuit on claim 1 or ask for vacatur in the first instance.

The Federal Circuit disagreed that a case or controversy existed because the IPR decision on claim 1 could have issue preclusive effects in future litigation. Best Medical pointed to another reexam involving a related patent in which the examiner had stated it was "essentially bound by the Board's reasoning" in the IPR for certain obviousness issues related to claim 1. The Federal Circuit reasoned that Best Medical would be free to appeal those issues in that other reexam—"we know of no cases that would apply collateral estoppel in these circumstances" involving "non-appealable issues and judgments." And even were that not so, the Court explained that "the potential for collateral consequences is insufficient, on its own, to confer standing" to appeal.

Longest pending case from argument: Best Medical International, Inc. v. Elekta Inc., No. 21-2099 (112 days)

Shortest (non-Rule 36) pending case from argument: In re: Killian, No. 21-2113 (110 days)

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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