NOTE: This order is n0nprecedentia1.
United States Court of AppeaIs
for the FederaI Circuit
PROMOTE INNOVATION LLC,
Plaintiff-Appellan.t, '
V.
ROCHE DIAGNOSTICS CORPORATION AND
ROCHE DIAGNOSTICS OPERATIONS, INC.,
Defendan,ts--Appellees,
AND
UNITED STATES, '
Defen,dcmt-Appellee.
2011-1503
Appea1 from the United States District C0urt for the
Southern District of Indiana in case 110. 10-CV-0964,
Judge Tanya Wa1ton Pratt.
ON MOTION
Before RA1)r;R, Chief Ju,dge, GA.JARSA and REYNA,` Circu,iz
Judges.
REYNA, Circu.it Judge.
0 R D E R

PROMOTE INNOVATION V. ROCHE 2
Promote Innovation LLC moves to dismiss this appeal
as moot and remand with instructions to vacate the
decisions of the United States District Court for the
Southern District of Indiana, including the court’s order
awarding Roche Diagnostics Corporation et al. (Roche)
costs pursuant to Rule 54(d) of the Federal Rules of Civil
Procedure. Roche opposes insofar as Promote’s motion
requests vacatur of the costs award.
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
eliminate 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”).
In light of the amendments to 35 U.S.C. § 292 and the
parties agreement on the effect of the Act under the facts
and circumstances of this case, this appeal is dismissed as
moot. Because the circumstance that rendered this case
moot was the amendment of § 292(b) by Congress, over
which the parties had no control, it is appropriate not only
to dismiss the appeal but to vacate the district court’s
decision dismissing Promote’s false marking complaint as
Well. 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 between the parties,’ preserving ‘the rights of all
parties,’ while prejudicing none ‘by a decision which . . .
was only preliminary."’ (citing Un.ited Stotes v. Munsin.g-
wear, Inc., 340 U.S. 36, 40 (195O))); Tafas v. Kappos, 586
F.3d 1369, 1371 (Fed. Cir. 2009) (“Vacatur . . . is appro-

3 PROMOTE INNOVATION V. ROCHE
priate if the mootness arises from external causes over
which the parties have 110 c0ntrol” (citing U.S. Bancorp
Mortg. Co. v. B0nner Mall P’ship, 513 U.S. 18, 25 (1994))).
We deem it the better course for the district court to
address whether the costs award survives the mooting of
this case in light of the Act in the first instance
Accordingly,
IT ls ORDERE:o THAT:
(1) The motion is granted to the extent that the dis-
trict court’s decision dismissing the case is vacated as
moot.
(2) The case is remanded with instructions to dismiss
the decision dismissing Promote’s complaint. '
(3) This appeal is dismissed
(4) Each side shall bear its own costs. _
FoR THE CoURT
NAR 1 5 39l? /S/ Jan H@rba1y
Date J an Horbaly
Clerk
cc: Matthew J. Antonelli, Esq.
Paul B. Hunt, Esq. F||_Ep
Jeanne E. Davidson, Esq. 03
319 mm 15 2012
.nmaonnAiv
tunc

