In Cardpool, Inc. v. Plastic Jungle, Inc., Appeal No. 2014-1562, the Federal Circuit affirmed the district court’s denial of vacatur, concluding that the district court’s final judgment as to an original group of claims does not automatically render that judgment res judicata as to new claims granted upon reexamination.
Cardpool sued Plastic Jungle in 2012 for patent infringement. The district court granted a motion to dismiss because the claims were invalid under 35 U.S.C. § 101. Cardpool then appealed to the Federal Circuit. Prior to the Federal Circuit deciding the appeal, Cardpool filed a request for ex parte reexamination and submitted new and amended claims. Before the USPTO completed reexamination, the Federal Circuit decided the appeal and affirmed the district court’s finding of ineligibility under § 101. Several days later, the USPTO issued a notice of intent to issue a reexamination certificate to the amended and new claims. Cardpool then petitioned for rehearing, requesting that the Federal Circuit vacate the affirmance of the district court’s finding of ineligibility. The Federal Circuit granted a rehearing, vacated the affirmance, and remanded to the district court.
On remand, Cardpool and Plastic Jungle jointly moved the district court to vacate its prior judgment so that the parties could request a voluntary dismissal without prejudice. The district court declined to vacate its prior judgment and explained that it would be against the public interest to allow a losing party to displace a final judgment simply by commencing an ex parte reexamination and amending its invalid claims. Cardpool appealed.
The Federal Circuit reviewed the district court’s determination for abuse of discretion. The Federal Circuit determined that the district court did not abuse its discretion in denying the motion to vacate its judgment, explaining that the district court violated no legal right in preserving its original decision which was limited to the claims and grounds that existed at the time. However, the district court’s judgment does not automatically render that judgment res judicata as to new claims granted upon reexamination.