Canadian Solar, Inc. v. Maxeon Solar Pte. Ltd.

Canadian Solar, Inc. v. Maxeon Solar Pte. Ltd. [Order] The Federal Circuit dismissed the appeal as moot because Maxeon’s unilateral covenant not to sue eliminated the live controversy. Because mootness resulted from the unilateral action of the party that prevailed before the Board, the court vacated the final written decision as to claim 12. A patent owner’s post-Board covenant not to sue can moot an IPR appeal, but if the patent owner prevailed below, the Federal Circuit may vacate the adverse-to-petitioner Board ruling rather than leave it intact. Motions granted to the extent the appeal was dismissed as moot and the Board’s final written decision was vacated as to claim 12 of the ’516 patent; the court declined to order the Board to dismiss the petition as to claim 12. Each party bears its own costs. The order is nonprecedential and arises from an IPR tied to an infringement dispute between Maxeon and Canadian Solar. Maxeon’s unilateral covenant not to sue Canadian Solar for infringement mooted Canadian Solar’s appeal from the Board’s no-unpatentability ruling on claim 12. Applying vacatur principles for mootness caused by the prevailing party’s unilateral action, the court vacated the relevant portion of the Board’s decision. The court did not require the Board to dismiss the IPR petition as to claim 12, citing MemoryWeb. standing / jurisdiction infringement remand non-precedential standing / jurisdiction infringement remand non-precedential standing / jurisdiction non-precedential