United States Court of Appeals for the
          Federal Circuit
                  __________________________

          THE OHIO WILLOW WOOD COMPANY,
          Plaintiff/Counterclaim Defendant-Appellant,
                               v.
                   THERMO-PLY, INC.,
             Defendant/Counterclaimant-Appellee,
                             and
                  COASTAL LINERS, LLC,
                  Counterclaimant-Appellee.
                  __________________________

                          2010-1119
                  __________________________

    Appeal from the United States District Court for the Eastern
District of Texas in case no. 07-CV-0274, Judge Ron Clark.
                    __________________________

          THE OHIO WILLOW WOOD COMPANY,
          Plaintiff/Counterclaim Defendant-Appellee,
                               v.
                   THERMO-PLY, INC.,
            Defendant/Counterclaimant-Appellant,
                             and
                  COASTAL LINERS, LLC,
                     Counterclaimant.
OHIO WILLOW   v. THERMO-PLY                                    2

                   __________________________

                           2010-1269
                   __________________________

    Appeal from the United States District Court for the Eastern
District of Texas in case no. 07-CV-0274, Judge Ron Clark.
                    __________________________

                         ON MOTION
                   __________________________

    Before RADER, Chief Judge, NEWMAN, and MOORE, Circuit
                           Judges.

Order for the court filed by Chief Judge RADER. Additional views
                       filed by Circuit Judge,
         NEWMAN. Concurrence filed by Circuit Judge,
                               MOORE.

RADER, Chief Judge.
                 __________________________

     JEFFREY S. STANDLEY, Standley Law Group LLP, of Dublin,
Ohio, and RICHARD E. FEE, Fee & Jeffries, P.A. of Tampa, Florida,
filed a joint motion to remand for plaintiff/counterclaim defen-
dant-appellant, defendant/counterclaimant-appellee and counter-
claimant-appellee. With them on the motion were JAMES L.
KWAK, F. MICHAEL SPEED, JR. and MICHAEL STONEBROOK of
Dubline, Ohio, and KATHLEEN M. WADE, of Tampa, Florida.
                   __________________________

                              ORDER
3                                       OHIO WILLOW   v. THERMO-PLY

   The parties jointly move for remand of these appeals. * Alps
South, LLC moves for leave to file a brief amicus curiae in 2010-
1119 or in the alternative for leave to intervene and oppose the
motion to remand. Alps South also moves for leave to file an
opposition to the motion to remand.
    We remand for the limited purpose of the district court’s
consideration of the parties' motion for vacatur. We retain juris-
diction so that any of the parties may seek appellate review by
notifying the Clerk of the Court within thirty days of entry of the
district court’s decision on remand.
     The appeals are held in abeyance pending the resolution of
the motion for vacatur by the district court. The parties should
promptly inform this court of the district court's ruling on the
motion pursuant to Fed. R. App. P. 12.1(b) and should propose
how they believe the appeals should proceed in light of the dis-
trict court's ruling.
    Accordingly,
    IT IS ORDERED THAT:
    (1) The motions to remand in 2010-1119, -1269 are granted to
the limited extent explained above. This court retains jurisdic-
tion over the appeals at this time.
    (2) The court's June 14, 2010 order dismissing 2010-1269 is
vacated, the mandate in 2010-1269 is recalled, and the appeal is
reinstated for purposes of the limited remand.
    (3) Alps South's motions are denied.

    *    In their motion to remand in 2010-1269, the parties also
request that 2010-1269 be dismissed. We assume that this re-
quest is erroneous, as it appears to be the parties' request that
the "actions" be remanded. We note that 2010-1269 was dis-
missed on June 14, 2010 for failure to file an opening brief. We
reinstate that appeal so that the entire matter can be remanded
for the limited purpose of the district court's consideration of the
parties' motion for vacatur.
OHIO WILLOW   v. THERMO-PLY                     4
                              FOR THE COURT


JANUARY 4, 2011               /s/ Jan Horbaly
     Date                     Jan Horbaly
                              Clerk
  United States Court of Appeals
      for the Federal Circuit
              __________________________

      THE OHIO WILLOW WOOD COMPANY,
      Plaintiff/Counterclaim Defendant-Appellant,
                          v.
               THERMO-PLY, INC.,
         Defendant/Counterclaimant-Appellee,
                         and
              COASTAL LINERS, LLC,
              Counterclaimant-Appellee.
              __________________________

                      2010-1119
              __________________________

   Appeal from the United States District Court for the
Eastern District of Texas in case No. 07-CV-0274, Judge
Ron Clark.
              __________________________

      THE OHIO WILLOW WOOD COMPANY,
      Plaintiff/Counterclaim Defendant-Appellee,
                          v.
               THERMO-PLY, INC.,
        Defendant/Counterclaimant-Appellant,
                         and
OHIO WILLOW   v. THERMO-PLY                               2

                COASTAL LINERS, LLC,
                   Counterclaimant.
                __________________________

                        2010-1269
                __________________________

   Appeal from the United States District Court for the
Eastern District of Texas in case No. 07-CV-0274, Judge
Ron Clark.

NEWMAN, Circuit Judge, additional views.
       I join the court’s Order to remand to the district
court for consideration of the motion for vacatur. I write
separately to point out that the views of our colleague in
separate concurrence are not the court’s remand order. I
am concerned with the apparent bias impressed upon the
district court’s action on remand.
       We have remanded so that the court that rendered
the decision can decide whether to vacate it, based on our
conclusion that the district court is in the better position
to make that ruling, indeed to consider all of the legal and
equitable considerations as may be brought to its atten-
tion by those favoring and opposing the motion. Our
remand should be unencumbered by even the appearance
of prejudgment or of the weight to be given to various
considerations. Indeed, the issues on which our colleague
in concurrence offers judicial advice are more complex
than is here recognized.
      This court does not have a complete picture of the
circumstances of this case – that is the reason for the
remand. 1 Whether a district court chooses to vacate its


      1    My colleague in “concurrence” offers the foot-
note proposition that “[t]here will be no opposing voice
3                                OHIO WILLOW   v. THERMO-PLY

own decision in a particular case is a matter of case-
specific discretion. I do not endorse the proffer of judicial
advice on selected issues, thereby placing an appellate
thumb on the scale of the remand order before it reaches
its destination.




when the parties move for vacatur because both parties
benefit.” This is inapplicable, for there has already been a
request for intervention of a third party, Alps South LLC.
Motion of Amicus Curiae, Alps South, LLC to File Brief In
Support Of Appellee, Thermo-Ply, Inc., Or In The Alterna-
tive To Intervene In This Appeal (July 26, 2010). FRCP
24(b)(1)(B) (“On timely motion, the court may permit
anyone to intervene who: . . . (B) has a claim or defense
that shares with the main action a common question of
law or fact.”). Alps South argues against vacatur, citing a
pending suit against it on the same patent. Indeed, the
existence of such additional complexity influenced this
court’s decision to remand the motion to the district court.
      United States Court of Appeals
              for the Federal Circuit
                  __________________________

          THE OHIO WILLOW WOOD COMPANY,
          Plaintiff/Counterclaim Defendant-Appellant,
                               v.
                   THERMO-PLY, INC.,
             Defendant/Counterclaimant-Appellee,
                             and
                  COASTAL LINERS, LLC,
                  Counterclaimant-Appellee.
                  __________________________

                          2010-1119
                  __________________________

    Appeal from the United States District Court for the Eastern
District of Texas in case no. 07-CV-0274, Judge Ron Clark.
                    __________________________

          THE OHIO WILLOW WOOD COMPANY,
          Plaintiff/Counterclaim Defendant-Appellee,
                               v.
                    THERMO-PLY, INC.,
             Defendant/Counterclaimant-Appellant,
                             and
                  COASTAL LINERS, LLC,
                     Counterclaimant.
                  __________________________

                          2010-1269
                  __________________________

    Appeal from the United States District Court for the Eastern
District of Texas in case No. 07-CV-0274, Judge Ron Clark.
Before RADER, Chief Judge, NEWMAN and MOORE, Circuit Judges.

MOORE, Circuit Judge, concurring.

      I concur in the order to remand to allow the district court to

consider vacatur. This remand should not, however, be construed

as an imprimatur on the joint vacatur motion. The Supreme

Court in U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership,

513 U.S. 18, 29 (1994), held that “mootness by reason of

settlement does not justify vacatur of a judgment under review.”

The Court made clear that vacatur was an “extraordinary remedy”

which petitioner would have to show “equitable entitlement to.”

Id. at 26. Only in “exceptional circumstances” should a district

court grant vacatur at the request of the litigants. Id. at 29. The

Court explained that “[j]udicial precedents are presumptively

correct and valuable to the legal community as a whole. They are

not merely the property of private litigants and should stand

unless a court concludes the public interest would be served by a

vacatur.” Id. at 26 (citations omitted). In a patent case, especially

where a patent has been invalidated, the public interest is

overwhelming. See Cardinal Chem. Co. v. Morton Int’l, Inc., 508

U.S. 83, 100 (1993) (holding that there is “a strong public interest

in the finality of judgments in patent litigation” and especially in

validity determinations).    In fact, in Cardinal Chemical, the




2010-1119, -1269                 2
Supreme Court held the public interest was so high that the

Federal Circuit must consider a validity determination on appeal,

even if the court concludes that the defendant does not infringe

the patent at issue. Id. at 101–02. This is because patents are

public rather than private rights and involve extremely high

stakes for the litigants. 1

        In this case, for example, the patentee has already sued

another party on the patent in question.      If the decision that

invalidated the patent at issue is not vacated, then the patentee

will be collaterally estopped from asserting this patent in this and

other suits, thereby saving courts and litigants the time and

money it takes to proceed with patent litigation.            Patent

litigations are among the longest, most time-consuming types of

civil actions. As of 2009, 384 patent cases had been pending in the

district courts for three years or more. 2009 Admin. Off. U.S. Cts.

Ann. Rep., at Table S-11. Moreover, the costs of patent litigation

are enormous with an average patent case costing upwards of $3

million for each side. See American Intellectual Property Law



    1        The public rights are particularly vulnerable when
considering vacatur following settlement. There will be no
opposing voice when the parties move for vacatur because both
parties benefit. Aside from the settlement itself, the patent owner
retains a patent that has been adjudged invalid and the defendant
now has a license to a patent that the patent owner may assert
against the defendant’s competitors.


2010-1119, -1269                 3
Association, Report of the Economic Survey 2009 I-129 (2009). If

the district court vacates its invalidity judgment then other

defendants and other district courts will be forced to proceed with

infringement suits, as there would likely be no collateral estoppel.

Even if there were no other suits pending, these concerns should

still weigh heavily against vacatur, as the only reason the

patentee would want an invalidity judgment vacated is to

potentially enforce the patent against others.

      In this case, the settlement agreement covers not only the

case on appeal to us, but three additional litigations between the

parties involving three different patents. This case is properly

remanded to the district court because the district court is in the

best position to determine whether the fact that this settlement

will end four litigations between the parties is sufficiently

“exceptional” to justify potentially forcing other defendants to

litigate or license the patent the district court has already held

invalid. See U.S. Bancorp, 513 U.S. at 29.




2010-1119, -1269                 4
