Repleading Dismissed Claims Does Not Nullify Underlying Dismissal Order

KOSS CORPORATION v. BOSE CORPORATION

Before Hughes, Stoll, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.

Summary: Filing an amended complaint does not nullify a dismissal order that was not later vacated. Such an order merges into a final judgement for purposes of issue preclusion.

Koss filed two lawsuits on the same day: a first lawsuit against Plantronics and a second lawsuit against Bose.  Both lawsuits alleged infringement of the ’155, ’934, and ’025 patents (the “asserted patents”).

In the lawsuit against Plantronics, the district court dismissed Koss’s first amended complaint with leave to amend, finding all claims of the asserted patents were invalid for claiming unpatentable subject matter. Koss filed a second amended complaint, but later voluntarily stipulated to dismiss the litigation with prejudice. Koss did not ask the district court to vacate its earlier finding that invalidated the claims of the asserted patents. The district court entered an order formally dismissing the suit with prejudice. Koss did not appeal that order.

Bose petitioned for Inter Partes Reviews of all three asserted patents.  The Board issued decisions in those IPRs, which Koss appealed to the Federal Circuit.  Bose moved to dismiss the appeals as moot, arguing that the district court in the lawsuit against Plantronics had invalidated the claims at issue on appeal.

The Federal Circuit agreed and granted Bose’s motion. It rejected an argument by Koss that its second amended complaint superseded the district court’s order invalidating all claims of the asserted patents. The Federal Circuit explained that, applying Ninth Circuit law, “claims in prior dismissed complaints need not be raised in amended complaints for them to be appealable” and thus an order dismissing such claims “merges into the final judgment.” Because Koss neither appealed the invalidity decision nor sought to have it vacated, the Federal Circuit held Koss’s patent claims had been invalidated. The Federal Circuit therefore dismissed the appeals as moot.

Editor: Sean Murray