Canadian Solar v. Maxeon Solar
Panel: Lourie, Prost, Reyna
The Federal Circuit dismissed as moot and vacated the Patent Trial and Appeal Board's decision upholding claim 12 of U.S. Patent No. 8,222,516 in Canadian Solar, Inc. v. Maxeon Solar PTE. Ltd. Canadian Solar had appealed the Board's determination that it failed to show the claim unpatentable in an IPR proceeding initiated in response to Maxeon's infringement suit. After the appeal was filed, Maxeon issued a unilateral covenant not to sue Canadian Solar for infringement, and both parties agreed the appeal should be dismissed, though they disputed whether vacatur was appropriate.
The court applied the principle from Arizonans for Official English v. Arizona that vacatur is appropriate when mootness results from the unilateral action of the party that prevailed below. Because Maxeon, the prevailing party before the Board, unilaterally mooted the appeal through its covenant not to sue, the court granted vacatur of the Board's decision as to claim 12. The court declined, however, to go further by ordering the Board to dismiss the underlying petition with respect to that claim, citing its recent decision in MemoryWeb.