Unique Product Solutions, Limited v. Hy-Grade Valve, Inc. , 462 F. App'x 967 ( 2012 )

NOTE: This order is nonprecedential.
United States Court of AppeaIs
for the FederaI Circuit
UNIQUE PRODUCT SOLUTIONS, LIMITED,
Plaintiff-Appellant,
AND .
UNITED STATES,
Interuen,or-Appellant,
V.
HY-GRADE VALVE, INC.,
Defendcmt-Appellee. -
2011-1254, -1284
Appea1s from the United States District C0urt for the
Northern District of Ohi0 in case no. 10-CV-1912, Judge
Dan Aaron P01ster.
ON MOTION
Before NEWMAN, L1NN, and REYNA, Circuic Judges.
LINN, Circu,it Judge.
0 R D E R
Hy-Grade Valve, Inc. (HGV) moves without opposition
to dismiss this appea1. The United States responds and
UNIQUE PRODUCT V. HY-GRADE VALVE 2
requests that this court also vacate the decision of the
United States District Court for the Northern District of
Ohio.
On September 16, 2011, the President signed into law
the Leahy-Smith America Invents Act, H.R. 1249, 112th
Cong. (1st Sess.2011), amending 35 U.S.C. § 292 to elimi-
nate the qui tam provision on which this action was
predicated. This act included the following text regarding
the effective date of this provision: “The amendments
made by this subsection shall apply to all cases, without
exception, that are pending on, or commenced on or after,
the date of the enactment of this Act.” Leahy-Smith
America Invents Act, Pub.L. No. 112-29 § 16(b)(4), 125
Stat. 284, 329 (2011) (“the Act").
ln light of the amendments to 35 U.S.C. § 292, this
case is moot. Because the circumstance that rendered this
case moot was the amendment of § 292(b) by Qongress, it
is appropriate to vacate the district court's determination
28 U.S.C. § 2106; see Alvarez v. Smith, 130 S. Ct. 576, 581
(2009) ("Applying this statute, we normally do vacate the
lower court judgment in a moot case because doing so
‘clears the path for future relitigation of the issues be-
tween the parties,’ preserving ‘the rights of all parties,’
while prejudicing none ‘by a decision which was only
preliminary.’ “(citing United States v. Munsingwear, lnc.,
340 U.S. 36, 40 (1950))); Tafas v. Kappos, 586 F.3d 1369,
1371 (Fed.Cir.2009) ("Vacatur is appropriate if the
mootness arises from external causes over which the
parties have no control" (citing U.S. Bancorp Mortg. Co. v.
Bonner Ma1l P'ship, 513 U.S. 18, 25 (1994))).
Accordingly,
IT ls 0RDERE:o THAT:
3 UN1QUE PRODUCT V. HY-GRADE VALVE
(1) The motion is granted to the extent that the dis-
trict court’s judgment is vacated and the case is remanded
with instructions to dismiss the complaint.
(2) Each party shall bear its own costs. '
FoR THE CoURT
JAN 1 8 2012
/s/ J an Horbaly
Date J an Horbaly
Clerk ‘ FlLED
"-Saa§aP€.se:°"
cc: Gregory R. Jones, Esq. l
Mark J. Skakun, IlI, Esq. JAN 1 3 2
012
Douglas N. Letter, Esq.
s20 JANci~‘lg§EALY
Issued As A Mandate: ____