Shibuya Kogyo Co., Ltd. v. Steuben Foods, Inc.

• Court: Court of Appeals for the Federal Circuit
• Decided: January 30, 2023
• Docket: 22-2256
• Status: Unpublished

Opinion

Case: 22-2256 Document: 12 Page: 1 Filed: 01/30/2023

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

SHIBUYA KOGYO CO., LTD., Appellant

v.

STEUBEN FOODS, INC., Appellee ______________________

2022-2256 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/000,686. ______________________

ON MOTION ______________________

Before TARANTO, MAYER, and STOLL, Circuit Judges. TARANTO, Circuit Judge. ORDER Steuben Foods, Inc. moves to dismiss this appeal for lack of standing. Shibuya Kogyo Co., Ltd. opposes. Shibuya appeals from the Patent Trial and Appeal Board’s final decision in this inter partes reexamination, which related to claims 9 and 20–23 of Steuben’s U.S. Pa- tent No. 6,481,468. Shibuya has no constitutional standing Case: 22-2256 Document: 12 Page: 2 Filed: 01/30/2023

to challenge the Board’s decision reversing the examiner’s rejection of those patent claims because the United States Patent and Trademark Office, in separate proceedings, is- sued a final certificate cancelling those same claims before this appeal was filed. See Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346 (Fed. Cir. 2022) (holding patentee lacked standing to appeal Board’s decision when the chal- lenged claim was finally canceled prior to appeal). Shibuya argues that it is injured by the Board’s claim construction, which it contends is likely to govern pending litigation in which related patents are asserted against it. But we have previously rejected attempts to establish standing based solely on concerns that a district court may later rely on the Board’s claim construction. See id. at 1353 (noting that non-appealable issues and judgments typically lack preclusive effect). For example, in SkyHawke Tech- nologies, LLC v. Deca International Corp., 828 F.3d 1373 (Fed. Cir. 2016), we explained that a party would “be able to appeal any such unfavorable claim construction by the district court should that situation arise,” and we could not “foresee how the claim construction reached by the Board” could satisfy the elements for any future application of is- sue preclusion. Id. at 1376. We see no basis for a disposition different from the one in Best Medical and SkyHawke: dismissal of the appeal. Shibuya has not shown that the Board’s claim construction will necessarily govern district court proceedings or that it will be without the ability to challenge a construction on appeal in those proceedings. Nor has Shibuya shown that vacatur is appropriate under United States v. Mun- singwear, Inc., 340 U.S. 36 (1950), because, as in Best Med- ical, “this appeal did not become moot during the pendency of the appeal,” 46 F.4th at 1351; instead, Shibuya’s “prob- lem is lack of standing at the outset of the appeal,” Apple Inc. v. Qualcomm Inc., 17 F.4th 1131, 1137 (Fed. Cir. 2021). Accordingly, Case: 22-2256 Document: 12 Page: 3 Filed: 01/30/2023

SHIBUYA KOGYO CO., LTD. v. STEUBEN FOODS, INC. 3

IT IS ORDERED THAT: (1) The motion is granted. The appeal is dismissed. (2) Each side shall bear its own costs. FOR THE COURT

January 30, 2023 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court ISSUED AS A MANDATE: January 30, 2023