Case: 19-2051 Document: 41 Page: 1 Filed: 01/06/2021
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`
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ABS GLOBAL, INC.,
`Appellant
`
`v.
`
`CYTONOME/ST, LLC,
`Appellee
`______________________
`
`2019-2051
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2017-
`02097.
`
`______________________
`
`Decided: January 6, 2021
`______________________
`
`STEVEN J. HOROWITZ, Sidley Austin LLP, Chicago, IL,
`argued for appellant. Also represented by PAUL J.
`ROGERSON.
`
` PRATIK A. SHAH, Akin Gump Strauss Hauer & Feld
`LLP, Washington, DC, argued for appellee. Also repre-
`sented by RACHEL BAYEFSKY, Z.W. JULIUS CHEN; DANIEL
`LYNN MOFFETT, KIRT S. O'NEILL, San Antonio, TX.
` ______________________
`
`Before PROST, Chief Judge, MOORE and STOLL, Circuit
`Judges.
`
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`ABS GLOBAL, INC. v. CYTONOME/ST, LLC
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`Opinion for the court filed by Circuit Judge STOLL.
`Opinion dissenting in part filed by Chief Judge PROST.
`STOLL, Circuit Judge.
`ABS Global, Inc. appeals the Patent Trial and Appeal
`Board’s decision in an inter partes review sustaining the
`patentability
`of
`certain
`claims
`of U.S. Patent
`No. 8,529,161, which is assigned to Cytonome/ST, LLC.
`Because ABS’s appeal is moot, we dismiss the appeal.
`BACKGROUND
`Cytonome is the assignee of the ’161 patent, directed to
`microfluidic devices and methods of configuring microflu-
`idic systems. A key issue in this case is whether Cytonome,
`the appellee in this IPR appeal, can reasonably be expected
`to assert the ’161 patent against ABS in the future. To fa-
`cilitate a full understanding of this issue, we provide back-
`ground on both the IPR proceedings below and parallel
`district court proceedings.
`In June 2017, Inguran, LLC, XY, LLC, and Cytonome
`filed a complaint against ABS and other defendants in dis-
`trict court asserting infringement of claims of six patents,
`including the ’161 patent. Four months later, ABS filed a
`petition for inter partes review of all claims of the ’161 pa-
`tent. The Board instituted review and subsequently, in
`April 2019, issued a final written decision that invalidated
`certain claims of the ’161 patent. The Board concluded that
`ABS had failed to demonstrate that the remaining claims
`of the ’161 patent were unpatentable. Two weeks after the
`Board’s final written decision, the district court granted in
`part ABS’s motion for summary judgment, concluding that
`ABS’s accused products did not infringe any of the ’161 pa-
`tent claims. In June 2019, nearly two months after the dis-
`trict court’s summary judgment decision, ABS appealed
`the Board’s final written decision. The district court held
`a jury trial covering the patents remaining in the case in
`September 2019.
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`ABS GLOBAL, INC. v. CYTONOME/ST, LLC
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`ABS filed its opening brief challenging the Board’s final
`written decision in this court in November 2019. Cyto-
`nome’s response brief, filed about three months later, in-
`cluded an affidavit by Cytonome’s counsel stating that
`Cytonome “has elected not to pursue an appeal of the dis-
`trict court’s finding of non-infringement as to the ’161 pa-
`tent and hereby disclaims such an appeal.” Appellee’s Br.
`Add. 1. Cytonome then argued that, because it disavowed
`its ability to challenge the district court’s summary judg-
`ment that ABS did not infringe the ‘161 patent claims, ABS
`lacked the requisite injury in fact required for Article III
`standing to appeal the Board’s final written decision re-
`garding validity of the claims of the ’161 patent.
`Four months later, in June 2020, the district court en-
`tered final judgment of noninfringement as to the ’161 pa-
`tent claims. ABS then timely filed motions for judgment
`as a matter of law with respect to the validity and infringe-
`ment of the patent claims tried to the jury. The district
`court has not yet ruled on ABS’s post-trial motions.
`DISCUSSION
`At the outset, we must address the jurisdictional issue
`first raised in Cytonome’s response brief on appeal. Cyto-
`nome argues that because it disclaimed any appeal of the
`district court’s judgment of noninfringement as to the
`’161 patent, ABS lacks Article III standing to pursue its ap-
`peal of the Board’s final written decision regarding the
`’161 patent claims’ validity. Specifically, Cytonome main-
`tains that ABS cannot demonstrate injury in fact sufficient
`to support standing because there is no basis to conclude
`that ABS is engaged in activity that would place it at sub-
`stantial risk of infringement of the ’161 patent claims. Ap-
`pellee’s Br. 20–21. ABS responds that mootness, not
`standing, provides the proper framework to assess jurisdic-
`tion in this case. In arguing that its appeal is not moot,
`ABS relies solely on a purported patent-specific exception
`to the mootness doctrine set forth in Fort James Corp.
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`ABS GLOBAL, INC. v. CYTONOME/ST, LLC
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`v. Solo Cup Co., 412 F.3d 1340 (Fed. Cir. 2005). Because
`we conclude that the voluntary cessation doctrine governs
`the mootness inquiry in this case, that Cytonome has
`demonstrated that its challenged conduct is not reasonably
`expected to recur, and that ABS has failed to demonstrate
`that it is engaged in or has sufficiently concrete plans to
`engage in activities not covered by Cytonome’s disavowal,
`we dismiss ABS’s appeal as moot.
`I
`This case presents an issue of mootness based on vol-
`untary cessation. Our resolution of this issue is guided by
`the Supreme Court’s framework in Already, LLC v. Nike,
`Inc., 568 U.S. 85 (2013). In Already, Nike brought a trade-
`mark infringement suit against Already and Already coun-
`terclaimed that Nike’s trademark was invalid. Id. at 88.
`Eight months after Nike filed its complaint and four
`months after Already filed its counterclaim, Nike con-
`cluded that the case no longer “warrant[ed] the substantial
`time and expense of continued litigation” and unilaterally
`issued a covenant not to sue Already. Id. at 88–89 (citation
`omitted). Nike’s covenant disclaimed any future trade-
`mark or unfair competition claim against Already or any
`affiliated entity “based on any of Already’s existing foot-
`wear designs, or any future Already designs that consti-
`tuted a ‘colorable imitation’ of Already’s current products.”
`Id. at 89 (citation omitted). Nike moved to dismiss its
`claims and Already’s counterclaims, arguing that the cove-
`nant not to sue had mooted any case or controversy. Id.
`Already opposed Nike’s motion, citing an affidavit from its
`president stating that Already had plans to market new
`versions of its shoes to support its argument that Nike did
`not establish that voluntary cessation mooted the case. Id.
`The district court granted Nike’s motion after “[f]inding no
`evidence that Already sought to develop any shoes not cov-
`ered by the covenant,” and the Second Circuit affirmed. Id.
`at 89–90.
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`On appeal, the Supreme Court explained that as a
`threshold matter, a case becomes moot “when the issues
`presented are no longer ‘live’ or the parties lack a legally
`cognizable interest in the outcome.” Id. at 91 (quoting Mur-
`phy v. Hunt, 455 U.S. 478, 481 (1982) (per curiam)). But “a
`defendant cannot automatically moot a case simply by end-
`ing its unlawful conduct once sued.” Id. (citing City of Mes-
`quite v. Aladdin’s Castle, Inc., 455 U.S. 283, 289 (1982)).
`Instead, “a defendant claiming that its voluntary compli-
`ance moots a case bears the formidable burden of showing
`that it is absolutely clear the allegedly wrongful behavior
`could not reasonably be expected to recur.” Id. (quoting
`Friends of the Earth, Inc. v. Laidlaw Env’t Servs. (TOC),
`Inc., 528 U.S. 167, 190 (2000)).
`Applying the voluntary cessation doctrine to the facts,
`the Court explained that initially, “it was Nike’s burden to
`show that it ‘could not reasonably be expected’ to resume
`its enforcement efforts against Already.” Id. at 92 (quoting
`Friends of the Earth, 528 U.S. at 190). Nike’s broad cove-
`nant satisfied this burden, the Court concluded, because it
`“allow[ed] Already to produce all of its existing footwear
`designs . . . and any ‘colorable imitation’ of those designs.”
`Id. at 93. Indeed, the Court found it “hard to imagine a
`scenario that would potentially infringe [Nike’s trademark]
`and yet not fall under the Covenant.” Id. at 94 (alteration
`in original) (citation omitted).
`Once Nike “demonstrat[ed] that the covenant encom-
`passe[d] all of its allegedly unlawful conduct, it was incum-
`bent on Already to indicate that it engages in or has
`sufficiently concrete plans to engage in activities not cov-
`ered by the covenant.” Id. In shifting the burden to Al-
`ready, the Court noted that “information about Already’s
`business activities and plans is uniquely within its posses-
`sion.” Id. The Court determined that Already failed to
`carry its burden because “Already did not assert any intent
`to design or market a shoe that would expose it to any pro-
`spect of infringement liability.” Id. at 95. The Court also
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`ABS GLOBAL, INC. v. CYTONOME/ST, LLC
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`concluded that the affidavit from Already’s president was
`insufficient because it “sa[id] little more than that Already
`currently has plans to introduce new shoe lines and make
`modifications to existing shoe lines,” without “stat[ing]
`that these shoes would arguably infringe Nike’s trademark
`yet fall outside the scope of the covenant.” Id. Considering
`the covenant’s broad language and Already’s failure to as-
`sert “concrete plans to engage in conduct not covered by the
`covenant,” the Court “conclude[d] the case is moot because
`the challenged conduct cannot reasonably be expected to
`recur.” Id.
`
`II
`Turning to the application of the voluntary cessation
`doctrine in this case, we conclude that Cytonome’s disa-
`vowal of its right to appeal the district court’s noninfringe-
`ment judgment mooted ABS’s appeal. Because Cytonome,
`like Nike in Already, voluntarily ceased its efforts to en-
`force its intellectual property right against the products at
`issue in the district court litigation, the voluntary cessation
`doctrine governs the mootness inquiry. Applying the vol-
`untary cessation framework, we first conclude on this rec-
`ord that Cytonome has demonstrated that it cannot
`reasonably be expected to resume its enforcement efforts
`against ABS. Shifting the burden of production to ABS, we
`then determine that ABS has not offered any evidence of
`current activity or plans to engage in activity that would
`subject ABS to infringement liability under the ’161 patent.
`Finally, we find unpersuasive ABS’s contention that an ex-
`ception to mootness articulated in Fort James renders
`ABS’s appeal not moot. Because the record demonstrates
`that there is no longer a live case or controversy between
`the parties, ABS’s IPR appeal is moot.
`A
`We first address whether Cytonome has demonstrated
`that the challenged behavior—Cytonome’s assertion of the
`’161 patent against ABS—cannot reasonably be expected
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`to recur. See Already, 568 U.S. at 92. Though Cytonome’s
`affidavit disavowing its appeal is unquestionably narrower
`than the covenant not to sue in Already, we agree with Cy-
`tonome that, like Nike’s covenant not to sue in Already, Cy-
`tonome’s disavowal here is “coextensive with the asserted
`injury” in fact. Oral Arg. at 30:22–32:10, http://oralargu-
`ments.cafc.uscourts.gov/default.aspx?fl=19-2051_
`09032020.mp3; see also Appellee’s Br. 21 (arguing that
`ABS cannot demonstrate an injury in fact because “ABS
`has already secured a district court’s summary judgment
`that it is not infringing the ’161 patent” and Cytonome’s
`disclaimer of any appeal leaves “no basis to conclude that
`ABS is currently engaging in infringing activity” (citations
`and internal quotation marks omitted)).1
`According to Cytonome, ABS’s only alleged injury in
`fact was the threat of an infringement finding in the pend-
`ing parallel district court infringement proceeding. Oral
`Arg. at 31:20–31:33. With respect to potential infringe-
`ment liability based on future products, Cytonome main-
`tains that “nothing in the record suggests ABS is
`substantially at risk of infringement.” Appellee’s Br. 22.
`ABS does not meaningfully dispute these assertions.2 And,
`
`1 Though Cytonome’s brief frames the issue in terms
`of standing, its arguments regarding ABS’s ongoing inter-
`est in the IPR appeal also apply to mootness. See Friends
`of the Earth, 528 U.S. at 189 (“[M]ootness can be described
`as ‘the doctrine of standing set in a time frame: The requi-
`site personal interest that must exist at the commence-
`ment of the litigation (standing) must continue throughout
`its existence (mootness).’” (quoting Arizonans for Off.
`Eng. v. Arizona, 520 U.S. 43, 68 n.22 (1997))); cf. id. at 190
`(recognizing differences in burdens of proof applicable to
`mootness and standing).
`2 For example, ABS does not identify plans to mar-
`ket future products that would possibly be the subject of a
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`ABS GLOBAL, INC. v. CYTONOME/ST, LLC
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`absent reversal or vacatur on appeal, the district court’s
`summary judgment of noninfringement therefore removes
`ABS’s alleged injury in fact. Accordingly, Cytonome’s dis-
`avowal of its right to appeal the summary judgment of non-
`infringement is coextensive with the asserted injury in
`fact.
`Cytonome has also demonstrated that its disavowal
`made it unlikely that its challenged behavior would recur.
`For purposes of our analysis here, Cytonome’s disavowal of
`its right to appeal effectively made final the district court’s
`judgment of noninfringement. And once ABS in effect had
`“a final judgment of noninfringement in the [district
`court]—where all of the claims were or could have been as-
`serted against [ABS]—the accused devices acquired a sta-
`tus as noninfringing devices, and [Cytonome] is barred
`from asserting that they infringe the same patent claims a
`second time.” Brain Life, LLC v. Elekta Inc., 746 F.3d
`1045, 1058 (Fed. Cir. 2014); see also SpeedTrack, Inc. v. Of-
`fice Depot, Inc., 791 F.3d 1317, 1323 (Fed. Cir. 2015)
`(“[U]nder Kessler [v. Eldred, 206 U.S. 285 (1907)], a party
`who obtains a final adjudication in its favor obtains ‘the
`right to have that which it lawfully produces freely bought
`and sold without restraint or interference.’” (quoting Rub-
`ber Tire Wheel Co. v. Goodyear Tire & Rubber Co., 232 U.S.
`413, 418 (1914))); MGA, Inc. v. Gen. Motors Corp., 827 F.2d
`729, 734 (Fed. Cir. 1987) (“The Kessler doctrine bars a pa-
`tent infringement action against a customer of a seller who
`has previously prevailed against the patentee because of
`
`
`future claim of infringement of the ’161 patent claims. The
`only potential injury in fact identified by ABS arises from
`Cytonome’s “broader strategy of serial patent litigation
`against ABS” and potential estoppel effects of the Board’s
`decision in future litigation involving the ’161 patent under
`35 U.S.C. § 315(e). Reply Br. 9–10; see id. at 2–11.
`
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`invalidity or noninfringement of the patent; otherwise, the
`effect of the prior judgment would be virtually destroyed.”).
`Cytonome’s disavowal therefore estops Cytonome from
`asserting liability against ABS for infringement of the
`’161 patent claims in connection with the accused products,
`thereby allowing ABS to make, use, and sell those products
`freely. See SpeedTrack, 791 F.3d at 1326 (“Kessler provides
`a party who has prevailed in a patent litigation the right to
`manufacture, use, or sell the product that has been deemed
`not to infringe without fear of continued challenges to that
`right based on the same patent.”). Cytonome’s disavowal
`would also bar a future suit for infringement of the ’161 pa-
`tent claims covering ABS products that are “essentially the
`same” as ABS’s currently accused products. Brain Life,
`746 F.3d at 1058; see id. at 1059 (“The Kessler Doctrine pre-
`cludes Brain Life from asserting any claims of the ’684 pa-
`tent against Elekta’s . . . [accused] products, however,
`because they are essentially the same as the iterations lit-
`igated in the first suit.”).
`
`B
`Because Cytonome has demonstrated on this record
`that its disavowal “encompasses all of its allegedly unlaw-
`ful conduct, it was incumbent on [ABS] to indicate that it
`engages in or has sufficiently concrete plans to engage in
`activities not covered by the [disavowal].” Already,
`568 U.S. at 94. As in Already, “information about [ABS’s]
`business activities and plans is uniquely within its posses-
`sion.” Id. On this record, we conclude that ABS has failed
`to produce any such evidence of an injury sufficient to sup-
`port an ongoing case or controversy, i.e., evidence that ABS
`reasonably expects Cytonome to sue ABS for infringement
`of the ’161 patent claims.
`ABS acknowledged during oral argument that there
`was no evidence in the record that ABS engaged in or had
`concrete plans to engage in activities not covered by Cyto-
`nome’s disavowal. Oral Arg. at 9:34–10:01. With respect
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`to additional evidence outside the record, ABS stated only
`that it had “shifted to a new design” that was the subject of
`another infringement suit in which Cytonome asserted dif-
`ferent patents. Id. at 6:12–7:40. Cytonome’s counsel rep-
`resented that ABS had argued at trial in the district court
`that its new design was a “redesign that avoids the
`’161 [patent].” Id. at 23:14–24:38. And ABS has not as-
`serted before this court that its new design would arguably
`infringe the ’161 patent claims so as to “expose [ABS] to
`any prospect of infringement liability.” Already, 568 U.S.
`at 95.
`ABS’s only other argument that it engages in or plans
`to engage in activity that would expose it to any prospect
`of infringement liability is not specific to the ’161 patent
`and relies solely on the parties’ prior litigation history. See,
`e.g., Oral Arg. at 11:42–12:40 (“On the question of whether
`we think it’s reasonable . . . to expect them to sue again, . . .
`they have repeatedly sued us on the same patents, that is
`to say, multiple cases involving the same one patent, . . .
`not the ’161 patent, but the point is that they have a course
`of conduct that reveals their suing us repeatedly on the
`same patent covering the same period of time.”); Reply
`Br. 9 (“Cytonome’s attempt to moot this appeal is also in
`line with its broader strategy of serial patent litigation
`against ABS.”). Indeed, ABS acknowledges that it cur-
`rently faces no “specific threat” of an infringement suit as-
`serting the ’161 patent claims. Oral Arg. at 9:34–10:45.
`ABS nonetheless asserts that in view of the prior litigation
`between the parties, “it is at least conceivable that Cyto-
`nome would sue [ABS] on the ’161 patent with respect to
`the aspects of the case that sort of post-date the judgment.”
`Id. (emphasis added). Even then, however, ABS believes
`that it “would have a very strong preclusion argument” if
`Cytonome were to again sue ABS for infringement of the
`’161 patent claims based on ABS’s ongoing use of the kinds
`of devices accused in the district court proceedings. Id.
`at 11:12–11:38.
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`As an initial matter, ABS’s assertion that Cytonome’s
`behavior will conceivably recur does not establish that
`ABS’s IPR appeal is not moot under the voluntary cessa-
`tion framework. See Already, 568 U.S. at 92 (“That is the
`question the voluntary cessation doctrine poses: Could the
`allegedly wrongful behavior reasonably be expected to re-
`cur?” (emphasis added)). In any event, we find Article III
`standing cases instructive in assessing ABS’s evidence of
`ongoing injury.
`When a “party relies on potential infringement liability
`as a basis for injury in fact, but is not currently engaging
`in infringing activity,” our Article III standing cases ex-
`plain that the party “must establish that it has concrete
`plans for future activity that creates a substantial risk of
`future infringement or [will] likely cause the patentee to
`assert a claim of infringement.” JTEKT Corp. v. GKN
`Auto. Ltd., 898 F.3d 1217, 1221 (Fed. Cir. 2018). In
`JTEKT, JTEKT sought to appeal an adverse IPR decision
`holding valid certain claims of GKN’s patent. Id.
`at 1218–19. At the time of the appeal, GKN and JTEKT
`were “competitors generally,” but GKN had not accused
`JTEKT of infringement. Id. at 1221. Moreover, “JTEKT
`expressly conceded that ‘no [potentially infringing] product
`is yet finalized,’” and noted that the product “concept will
`continue to evolve and may change until it is completely
`finalized.” Id. (citations omitted). This court held that
`JTEKT lacked standing because it “ha[d] not established
`at this stage of the development that its product creates a
`concrete and substantial risk of infringement or will likely
`lead to claims of infringement.” Id.
`Similarly, in General Electric Co. v. United Technolo-
`gies Corp., 928 F.3d 1349, 1355 (Fed. Cir. 2019), this court
`held that General Electric (GE) lacked Article III standing
`to maintain its IPR appeal for failure to establish injury in
`fact. United Technologies (UTC) had not sued GE for in-
`fringement at the time of GE’s IPR appeal and GE submit-
`ted two declarations to support injury in fact. Id. at 1352.
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`The declarations attested that GE develops new engines
`based on old designs and that UTC’s ’605 patent, at issue
`in the IPR, hampered GE’s ability to use an old geared-fan
`engine design to develop new engine designs. Id. GE de-
`clared that UTC’s patent thus impeded GE’s “ability to
`compete in a highly regulated industry” and that designing
`around UTC’s ’605 patent imposed increased research and
`development costs on GE. Id. GE also declared that in de-
`veloping a bid for submission to a customer, GE spent time
`and money “research[ing and developing] a geared-fan en-
`gine design that ‘would potentially implicate [UTC’s]
`605 Patent.’” Id. at 1353 (second alteration in original) (ci-
`tation omitted). Ultimately, GE chose not to submit that
`design, but the record did not specify why GE made this
`choice or indicate whether GE won the bid. Id. More gen-
`erally, GE attested that “it needs to be able to meet cus-
`tomer needs with a geared-fan engine design that may
`implicate the ’605 patent.” Id.
`This court deemed GE’s competitive injuries “too spec-
`ulative to support constitutional standing,” because the
`record did not “show[] a concrete and imminent injury to
`GE related to the ’605 patent.” Id. (citing Phigenix, Inc.
`v. Immunogen, Inc., 845 F.3d 1168, 1171 (Fed. Cir. 2017)).
`Specifically, GE did not assert that it lost bids as a result
`of its inability to deliver a geared-fan engine design, that
`potential infringement liability drove GE’s decision about
`which design to submit to its customer, or that GE lost
`business opportunities because it could not deliver a poten-
`tially infringing geared-fan engine design. Id. at 1353–54.
`Nor could GE’s assertion of economic losses support stand-
`ing, because GE “fail[ed] to provide an accounting for the
`additional research and development costs expended to de-
`sign around the ’605 patent,” or any “evidence that GE ac-
`tually designed a geared-fan engine,” or that GE’s
`increased research and development costs were tied to cus-
`tomer demand for a geared-fan engine. Id. at 1354. In
`other words, GE failed to causally link increased research
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`and development costs to the ’605 patent. Id. This court
`also concluded that GE did not establish future injury due
`to the absence of “evidence that GE is in the process of de-
`signing an engine covered by claims . . . of the ’605 patent”
`or “has definite plans to use the claimed features of the ’605
`patent in the airplane engine market.” Id. (citing JTEKT,
`898 F.3d at 1221). Because GE failed to establish injury in
`fact sufficient to support a case or controversy, this court
`held that GE lacked standing to pursue its IPR appeal. Id.
`at 1355.
`Considering these cases, we conclude that ABS’s IPR
`appeal is moot because there is no injury sufficient to sup-
`port an ongoing case or controversy. Though ABS is correct
`that “a statutory grant of a procedural right” to an IPR ap-
`peal “may relax the requirements of immediacy and re-
`dressability[,] . . . the statutory grant of a procedural right
`does not eliminate the requirement that [ABS] have a par-
`ticularized, concrete stake in the outcome of the [IPR ap-
`peal].” Consumer Watchdog v. Wis. Alumni Research
`Found., 753 F.3d 1258, 1262 (Fed. Cir. 2014) (first citing
`Massachusetts v. E.P.A., 549 U.S. 497, 517–18 (2007); and
`then citing Summers v. Earth Island Inst., 555 U.S. 488,
`496 (2009)). Here, the evidence in the record fails to estab-
`lish that ABS had a “particularized, concrete stake in the
`outcome” of its IPR appeal. Id.
`ABS’s evidence of injury falls far short even of the evi-
`dence we have held insufficient to establish injury in fact
`to support standing. For example, unlike JTEKT and GE,
`ABS has not alleged that it is developing or has plans to
`develop any potentially infringing product, or that the
`’161 patent claims impeded its ability to develop any prod-
`ucts or meet customer needs. Nor has ABS asserted that
`it incurred additional costs as a result of trying to design
`around the ’161 patent claims or that it allocated resources
`to developing a product arguably covered by the ’161 patent
`claims. Indeed, ABS represents that there is no record ev-
`idence of any activity by ABS to take action that would
`
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`ABS GLOBAL, INC. v. CYTONOME/ST, LLC
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`implicate the claims of the ’161 patent. Oral Arg.
`at 9:34–10:01. With respect to litigation, ABS stands in the
`same position as GE and JTEKT (which had not been sued
`for infringement) given the absence of any “specific threat”
`of an infringement suit asserting the ’161 patent. See id.
`at 9:34–10:45.
`ABS’s evidence of injury essentially amounts to the ex-
`istence of a nonzero risk of future litigation based on its
`litigation history with Cytonome. See id. at 11:42–12:40.
`Without more, this is clearly insufficient to establish injury
`in fact to defeat mootness, even considering that Cytonome
`repeatedly asserted other patents against ABS. Prior liti-
`gation history alone does not establish a basis for ABS to
`reasonably expect that Cytonome will again assert the
`’161 patent claims against ABS. See AVX Corp. v. Presidio
`Components, Inc., 923 F.3d 1357, 1365 (Fed. Cir. 2019)
`(concluding, in a case where parties had a history of prior
`litigation, that “AVX’s suspicion that Presidio would assert
`the upheld claims against AVX if it had a reasonable basis
`for doing so . . . does not mean that there is any reasonable
`basis right now” (citation omitted)). As in AVX, there is no
`evidence that ABS’s prior litigation history with Cytonome
`on different patents has made its risk of litigation for in-
`fringement of the ’161 patent claims any more concrete.
`See id. (“It does not matter that Presidio has sued AVX over
`capacitors that did not contain the buried metallizations
`claimed in the [subject] patent.”).
`Because ABS has not established that it “engages in or
`has sufficiently concrete plans to engage in activities not
`covered by” Cytonome’s disavowal, we conclude that ABS
`has not rebutted Cytonome’s showing that Cytonome’s con-
`duct is not reasonably expected to recur. Already, 568 U.S.
`at 94.
`
`C
`We also find unpersuasive ABS’s primary argument
`that its IPR appeal is not moot based on an exception to
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`mootness that ABS gleans from Fort James. According to
`ABS, Fort James describes an exception to mootness “that
`arises in the context of patent law: a patent owner who
`strategically waits until after the resolution of its claim for
`patent infringement to offer a covenant not to sue (and not
`to appeal) does not moot a challenge to the patent’s valid-
`ity.” Reply Br. 6. We do not read Fort James so broadly.
`Nonetheless, ABS does not even attempt to explain how
`Fort James, which was decided in the context of a single
`proceeding, applies to this case, which involves parallel
`IPR and district court proceedings.
`Fort James involved a patent infringement lawsuit by
`Fort James Corporation against Solo Cup Company in
`which Solo Cup denied the infringement allegations and
`asserted counterclaims for invalidity, unenforceability, and
`noninfringement. 412 F.3d at 1342–43. The district court
`bifurcated Solo Cup’s unenforceability counterclaim from
`the infringement and invalidity issues, which were tried to
`a jury. Id. at 1344. The jury upheld the validity of the as-
`serted patent claims and found them not infringed. Id.
`at 1345. Solo Cup subsequently requested that the district
`court schedule a hearing on the unenforceability counter-
`claim, which Fort James opposed, arguing that the jury
`verdict eliminated the controversy underlying the counter-
`claim. Id. In response to the district court’s request for
`additional briefing, Fort James attached as an exhibit to
`its brief a covenant not to sue Solo Cup on the three origi-
`nally asserted patents, which also represented that Fort
`James would not seek to overturn the jury’s verdict. Id.
`The district court dismissed as moot Solo Cup’s unenforce-
`ability counterclaim. Id.
`On appeal, this court determined that Fort James’s
`post-verdict covenant “had no effect on Fort James’s claim
`for infringement” in the same proceeding, “because that
`controversy had already been resolved by the jury’s ver-
`dict.” Id. at 1348. Accordingly, to assess mootness, this
`court addressed “whether the [district] court retained
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`jurisdiction to hear Solo Cup’s declaratory judgment coun-
`terclaim after the jury determined that Solo Cup’s products
`do not infringe Fort James’s patents.” Id. This court relied
`on Cardinal Chemical Co. v. Morton International, Inc. for
`the proposition that “a counterclaim questioning the valid-
`ity or enforceability of a patent raises issues beyond the in-
`itial claim for infringement that are not disposed of by a
`decision of non-infringement.” Id. (first citing Cardinal
`Chem., 508 U.S. 83, 96 (1993); and then citing Altvater
`v. Freeman, 319 U.S. 359, 364 (1943)). Accordingly, this
`court concluded that “the jury verdict holding that Solo
`Cup did not infringe Fort James’s patents did not moot Solo
`Cup’s counterclaim for unenforceability nor did it act to di-
`vest the district court of jurisdiction to hear that unliti-
`gated counterclaim.” Id. (first citing Fin Control Sys. Pty,
`Ltd. v. OAM, Inc., 265 F.3d 1311, 1321 (Fed. Cir. 2001); and
`then citing Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350,
`1356 (Fed. Cir. 1999)).
`Rather than creating the broad exception advocated by
`ABS, we view Fort James as a straightforward application
`of Cardinal Chemical. Cardinal Chemical “affirmed the
`unremarkable proposition that a court’s ‘decision to rely on
`one of two possible alternative grounds (noninfringement
`rather than invalidity) did not strip it of power to decide
`the second question, particularly when its decr