Promote Innovation LLC v. Roche Diagnostics Corporation and Roche Diagnostics Operations, Inc.

NOTE: This order is nonprecedential.

# United States Court of Appeals for the Federal Circuit

PROMOTE INNOVATION LLC,
Plaintiff-Appellant,
V.
ROCHE DIAGNOSTICS CORPORATION AND
ROCHE DIAGNOSTICS OPERATIONS, INC.,
Defendants-Appellees,
AND
UNITED STATES,
Defendant-Appellee.

2011-1503

Appeal from the United States District Court for the
Southern District of Indiana in case no. 10-CV-0964,
Judge Tanya Walton Pratt.

ON MOTION

Before RADER, Chief Judge, GAJARSA and REYNA, Circuit
Judges.

REYNA, Circuit Judge.

ORDER

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Promote Innovation LLC moves to dismiss this appeal
as moot and remand with instructions to vacate the
decisions of the United States District Court for the
Southern District of Indiana, including the court's order
awarding Roche Diagnostics Corporation et al. (Roche)
costs pursuant to Rule 54(d) of the Federal Rules of Civil
Procedure. Roche opposes insofar as Promote's motion
requests vacatur of the costs award.

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").

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
moot. 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
decision dismissing Promote's false marking complaint 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 relitigation 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. Munsing-
wear, Inc., 340 U.S. 36, 40 (1950))); Tafas v. Kappos, 586
F.3d 1369, 1371 (Fed. Cir. 2009) ("Vacatur ... is appro-

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priate 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))).

We deem it the better course for the district court to
address whether the costs award survives the mooting of
this case in light of the Act in the first instance.

Accordingly,

IT IS ORDERED THAT:

(1) The motion is granted to the extent that the dis-
trict court's decision dismissing the case is vacated as
moot.

(2) The case is remanded with instructions to dismiss
the decision dismissing Promote's complaint.

(3) This appeal is dismissed.

(4) Each side shall bear its own costs.
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FOR THE COURT

MAR 1 5 2012

Date

/s/ Jan Horbaly
Jan Horbaly
Clerk

cc: Matthew J. Antonelli, Esq.
Paul B. Hunt, Esq.
Jeanne E. Davidson, Esq.

$19

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
MAR 15 2012

JAN HORBALY
CLERK