United States District Court, D. Delaware
before the Court is Plaintiffs Motion for Vacatur and
Dismissal as Moot of my previous non-infringement judgments
in these cases. (D.I. 207). The cases return to me after the
Federal Circuit found them moot on appeal and denied panel
rehearing on the issue of vacatur. The parties have thoroughly
briefed the issues. (D.I. 208, 210, 213; C.A. 13-2066, D.I.
initial matter, Defendants assert that the Federal
Circuit's denial of Plaintiff s petition for panel
rehearing should dictate my analysis of this issue. (D.I. 210
at 17-18; C.A. 13-2066, D.I. 162 at 3-5). They do not cite
any caselaw or other authority in support of their assertion.
Plaintiff responds, "Whatever the reason for the denial
of rehearing, it is not possible to conclude that in denying
without comment Dragon's petition for rehearing, the
Federal Circuit intended to take a position on the ultimate
question of the appropriateness of vacatur." (D.I. 208
at 15). Specifically, in its petition for panel rehearing,
Plaintiff noted, "[B]oth district courts and courts of
appeals have the power to vacate, or to direct the vacatur
of, judgments in cases that become moot during an
appeal." (Id. at 15 n. 12 (citing D.I. 71-1,
Exh. 1 at 2 n.l)). Therefore, Plaintiff argues, it is
plausible that the Federal Circuit denied panel rehearing,
because "the appropriate course of action was to leave
the question of vacatur to this Court." (Id. at
15). I agree with Plaintiff. It is not possible to discern
from the record the Panel's rationale for denying
rehearing. Moreover, I find it unlikely that the
Federal Circuit intended to foreclose further consideration
of vacatur, an apparently appropriate remedy, with a summary
denial of a petition for panel rehearing. Therefore, I will
consider the merits of Plaintiff s motion.
Rule of Civil Procedure 60(b) empowers district courts to
vacate judgments for several specified reasons. A catchall
provision, Rule 60(b)(6) provides: "[T]he court may
relieve a party ... from a final judgment. . . for . . . any
other reason that justifies relief" The Third Circuit
instructs, "[C]ourts are to dispense their broad powers
under 60(b)(6) only in 'extraordinary circumstances
where, without such relief, an extreme and unexpected
hardship would occur.'" Cox v. Horn, 757
F.3d 113, 120 (3d Cir. 2014) (quoting Sawka v.
Healtheast, Inc., 989 F.2d 138, 140 (3d Cir. 1993)).
"[W]hether the 60(b)(6) motion under review was brought
within a reasonable time" is one critical factor in the
"equitable and case-dependent" analysis.
Cox, 757 F.3d at 115-16. Beyond these general
principles, Third Circuit precedent provides little guidance,
because that court has not employed its "extraordinary
circumstances" analysis in the context of a case mooted
prior to appellate review.
and tradition strongly support a conclusion that intervening
mootness of a case, prior to appellate review, is an
"extraordinary circumstance." As a general matter,
judgments that are mooted prior to appellate review should be
vacated. "A party who seeks review of the
merits of an adverse ruling, but is frustrated by the
vagaries of circumstance, ought not in fairness be forced to
acquiesce in the judgment" U.S. Bancorp Mortg. Co.
v. Bonner Mall P'ship, 513 U.S. 18, 25 (1994);
see also United States v. Munsingwear, Inc., 340
U.S. 36, 39 n. 2 (1950) (cataloguing cases where the Court
vacated judgments following determinations of mootness);
Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d
1316, 1321 (Fed. Cir. 2016) (noting Supreme Court precedent
dictating vacatur when intervening mootness is not
attributable to a party). "The point of vacatur is to
prevent an unreviewable decision 'from spawning any legal
consequences,' so that no party is harmed by ... a
'preliminary' adjudication." Camreta v.
Greene, 563 U.S. 692, 713 (2001) (citing
Munsingwear, 340 U.S. at 40 ("When that
procedure is followed, the rights of all parties are
preserved; none is prejudiced by a decision which in the
statutory scheme was only preliminary.")). Moreover, in
the Rule 60(b)(6) context, when a district court is faced
with a judgment mooted prior to appellate review, the Fourth
Circuit has held:
[T]he Bancorp considerations that are relevant to
appellate vacatur for mootness are also relevant to, and
likewise largely determinative of, a district court's
vacatur decision for mootness under Rule 60(b)(6), even if
those considerations do not necessarily exhaust the
permissible factors that may be considered by a district
court in deciding a vacatur motion.
Valero Terrestrial Corp. v. Paige, 211 F.3d 112, 121
(4th Cir. 2000).
case presents an "extraordinary circumstance" where
vacatur under Rule 60(b)(6) is appropriate. Plaintiff was
diligent in seeking review following entry of final judgment
of noninfringement. But the Patent Trial and Appeals Board
(PTAB) subsequently invalidated the claims at issue in this
case, and the Federal Circuit affirmed that decision. Thus,
Plaintiffs appeal became moot prior to review. As a result,
absent vacatur of my prior judgment, Plaintiff is at
significant risk of harm from an unreviewed decision. Indeed,
Defendants' apparent goal in (and the only rational
reason for) opposing Plaintiffs motion for vacatur is to
secure their right to pursue attorneys' fees as
"prevailing parties." (See D.I. 210 at
14-20). An increased risk of liability for attorneys'
fees based on an unreviewed decision is unquestionably an
"extreme and unexpected hardship." Thus, I will
vacate my previous judgments of non-infringement in these
of the case is not appropriate at this juncture. Although the
issue of infringement underlying Plaintiffs complaint is
moot, Defendants' motions for attorney's fees remain
outstanding. "If a judgment has become moot [while
awaiting review], [a court] may not consider its merits, but
may make such disposition of the whole case as justice may
require." Walling v. James V. Reuter, Inc., 321
U.S. 671, 677 (1944). An appropriate disposition of the
entire case may include an award of costs. See U.S.
Bancorp Mortg. Co., 513 U.S. at 21; see also Cty. of
Morris v. Nationalist Movement, 273 F.3d 527, 534 (3d
Cir. 2001) ("[A]n award of attorney's fees with
respect to the trial phases of a case is not precluded when a
case becomes moot during the pendency of an appeal.");
Constangy, Brooks & Smith v. N.L.R.B., 851 F.2d
839, 842 (6th Cir. 1988) ("It would be particularly
inappropriate to vacate the district court's order in the
instant case in light of appellee's motion for
attorney's fees pending before the district court. .
.."); Grano v. Barry, 733 F.2d 164, 168 n.2
(D.C. Cir. 1984) ("[Dismissal of.. . part of the appeal
as moot is not dispositive as to the issue of attorneys'
fees . . . ."); Doe v. Marshall, 622 F.2d 118,
120 (5th Cir. 1980) ("[A] determination of mootness
neither precludes nor is precluded by an award of
attorneys' fees."); Williams v. Alioto, 625
F.2d 845, 848 (9th Cir. 1980) ("Claims for
attorneys' fees ancillary to the case survive
independently under the court's equitable jurisdiction,
and may be heard even though the underlying case has become
moot."). Therefore, I will retain jurisdiction to
resolve Defendants' motions and deny Plaintiffs request
Plaintiffs Motion for Vacatur and Dismissal as Moot (C.A.
13-2058, D.I. 140; C.A. 13-2061, D.I. 207; C.A. 13-2062, D.I.
204; C.A. 13-2063, D.I. 203; C.A. 13-2064, D.I. 196; CA.
13-2065, D.I. 221; C.A. 13-2066, D.I. 159; C.A. 13-2067, D.I.
170; C.A. 13-2068, D.I. 206; C.A. 13-2069, D.I. 196) is
GRANTED-IN-PART AND DENIED-IN-PART.
 On April 27, 2016, this Court issued
judgments in favor of Defendant Apple, Inc., CA. 13-2058,
D.I. 133; Defendant AT&T Services, Inc., CA. 13-2061,
D.I. 168; Defendant Charter Communications, Inc., CA.
13-2062, D.I. 181; Defendant Comcast Cable Communications,
LLC, CA. 13-2063, D.I. 180; Defendant Cox Communications
Inc., CA. 13-2064, D.I. 173; Defendant Dish Network, LLC, CA.
13-2066, D.I. 117; Defendant Sirius XM Radio Inc., CA.
13-2067, D.I. 130; Defendant Time Warner Cable Inc., CA.
13-2068, D.I. 183; and Defendant Verizon Communications,