Flipping the switch on the last remaining claims in the case, a Massachusetts Court recently dismissed as moot two defendants’ counterclaims for declaratory judgment of invalidity and unenforceability following a PTAB decision invalidating the asserted patent.

In 2013, Maureen Reddy sued defendants Lowe’s and Evolution Lighting for infringement of U.S. Design Patent No. D677,423, alleging that Evolution Lighting made and sold Lowe’s infringing light shades. Defendants asserted counterclaims for declaratory judgment of non-infringement, invalidity, and unenforceability. Later, in September, 2015, the Court granted the defendants’ motion for summary judgment of non-infringement and denied defendants’ motions for summary judgment of invalidity as moot. Importantly, the Court construed the summary judgment motions as directed only to Reddy’s claims, leaving the defendants’ counterclaims for invalidity and unenforceability alive.

Parallel to the District Court case, Lowe’s filed for inter partes review of the ’423 patent. The IPR concluded in April 2016, with the PTAB issuing a final decision invalidating the ’423 patent as obvious. Shortly after the PTAB’s final decision, the Court stayed the case until the time for Reddy to appeal the PTAB decision expired or any appeal terminated.

With only the counterclaims remaining, the Court returned to the case after the time for appeal of the PTAB’s decision had expired. The Court observed that “[w]hen ‘a claim is cancelled, the patentee loses any cause of action based on that claim, and any pending litigation in which the claims are asserted becomes moot.’” (quoting the Federal Circuit’s opinion in Fresenius USA, Inc. v. Baxter Int’l, Inc.) Thus, with the only claim of the ’423 patent canceled, the Court concluded the defendant’s remaining invalidity and unenforceability counterclaims were moot and dismissed them.

The case is Reddy v. Lowe’s Companies, Inc. and Evolution Lighting, LLC, No. 13-cv-13016 (D.Mass), before Hon. Indira Talwani. A copy of the order can be found here.