District court retained subject matter jurisdiction for motion for summary judgment because the patentee’s statements and “tacit acceptance” of litigation representations amounted to continued assertion of valid patent claims

The patentee first sued for infringement in January 2010. The defendant counterclaimed for non-infringement and invalidity. After a jury trial, the jury found that the defendants did not infringe the asserted claims, and that the claims were anticipated as obvious. On appeal, the Federal Circuit reversed the district court, concluding that the claims were not anticipated. The United States Patent and Trademark Office (USPTO) then reissued the asserted patent and patentee subsequently filed two additional infringement suits asserting the reissued claims and moved to amend the complaint to add those claims to the original case. On a motion for summary judgment, the district court concluded that all reissued claims had been improperly broadened. The patentee appealed again, and the Federal Circuit affirmed but for two reissue claims.

On remand following the second appeal, the patentee tried to dismiss one of its cases for lack of subject matter jurisdiction, arguing that the two reissued claims were never asserted in that case. At the same time, the accused infringer moved for summary judgment of non-infringement on the surviving claims. The district court found that the two reissued claims were not infringed, and denied the motion to dismiss for lack of subject matter jurisdiction. The patentee appealed for a third time.

The Federal Circuit found that subject matter jurisdiction did exist because the two reissued claims that had originally survived the second appeal had, in fact, been asserted in the earlier district court litigation. The patentee had argued that the two valid claims of the reissued patent had never actually been asserted, but the Federal Circuit disagreed, noting repeated admissions and concessions made during the long procedural history of the case that the claims were asserted as infringed.

The Federal Circuit also found that the case itself was not moot just because the patentee had offered to provide a covenant not to sue on the asserted reissued claims. Although, the patentee had attached as an exhibit to a pleading a draft covenant not to use, the Federal Circuit found that patentee did not unconditionally assure the accused infringers and their customers that it would not assert the reissued claims against them. The district court therefore retained jurisdiction, and summary judgment was appropriate.