The U.S. Court of Appeals for the Federal Circuit allowed a patentee to avoid fatal damage to its pending cases against other defendants by removing the issue of invalidity from a pending appeal, permitting the parties on appeal to consent to a holding of implied license. Baychar, Inc. v. Salomon North America, Inc., Case No. 08-1052 (Fed. Cir., June 18, 2008) (per curiam)

In the latest installment from the Federal Circuit in this marathon litigation involving Baychar and Salomon, Baychar succeeded in keeping its patent valid, at least for now, by agreeing to a holding of non-liability against Salomon based on finding of implied license. This tactic allows Baychar to press its litigation efforts against different defendants in other cases.

After Baychar sued Salomon for patent infringement, the district court entered a judgment of non-liability based on finding that the liability for infringement was precluded on the ground of implied license / patent exhaustion. Additionally, the court held the asserted patent was invalid.

On appeal, Baychar did not contest the finding of implied license and the Federal Circuit affirmed the district court’s finding of non-liability on that ground. During oral argument in the appeal, defendant’s counsel advised the Court that Salomon agreed with Baychar that the court need not reach the issue of invalidity and that defendant agreed that the judgment of invalidity could appropriately be vacated. The Court agreed and vacated the district court’s judgment of invalidity.

Practice Note: The validity of the asserted claim is before the Court in another case, Baychar v. Burton. As a result, while Salomon is free from liability here, the validity of the patent in suit remains unresolved, there by allowing Baychar to continue the proceedings against other defendants.