Monday, May 7, 2018

Is WesternGeco Moot?

This morning the Federal Circuit published its opinion in WesternGeco LLC v. ION Geophysical Corp., affirming the PTAB's determination that certain claims of three WesternGeco patents are invalid.  On Twitter, Janice Mueller asks "Does this moot the Supreme Court’s pending consideration of offshore LP damages if the WG patents are gone??"  I think the answer is no, because if I understand the facts correctly there were four patents in suit in the infringement proceeding, all of which were found to be valid and infringed; and according to today's Federal Circuit's opinion (p.3 n.2) one of these four, U.S. Patent. No. 6,691,038, was "not at issue here," that is, in the appeal from the PTAB.  Also, although I have not immersed myself in the record of this case, I believe that one of the infringed claims of one of the instituted patents also was not an issue in the PTAB appeal (claim 23 of the '520 Patent).  So as long as some portion of the damages award could have been based on the infringement of these noninstituted claims, I think the Supreme Court still has jurisdiction (though I hasten to note that I am not an expert on federal jurisdiction).  Otherwise, I'd be inclined to think the answer would be yes--assuming that the claims at issue in the infringement proceeding are the same as the instituted claims, a matter I haven't checked--though I'd also note that the Federal Circuit's mandate (making the appellate decision final) normally wouldn't issue until (I think) 21 days out, under Federal Rules of Appellate Procedure 40 and 41.  But if any readers know more about this that I do, please comment.

In other news, last Friday the Federal Circuit affirmed a finding of inequitable conduct in its nonprecedential opinion in Energy Heating v. Heat On-The-Fly.  Dennis Crouch discusses the opinion on Patently-O.  For present purposes, I'll note only that the court vacates the district court's denial of attorneys' fees, stating that while there is no per se rule that a finding of inequitable conduct must result in an award of fees, the "district court must articulate a basis for denying attorneys’ fees following a finding of inequitable conduct. Just as it is incumbent on a trial court to articulate a basis for finding a case exceptional, it is equally necessary to explain why a case is not exceptional in the face of an express finding of inequitable conduct" (pp. 22-23).  The court therefore remands for reconsideration.


  1. Even if it were all claims on all patents, I suspect that with rehearing and cert petition, they could keep the case alive long enough not to moot it at the Supreme Court...