NOTE: This order is nonprecedential
United States Court of A1:1peaIs
for the FederaI Circuit
\
THE OHIO WILLOW WOOD COMPANY,
Plaintiff/C0unterclaim Defendant-Appellant,
V.
THERMO-PLY, INC.,
Defendant/ Counterclaimant-Appellee,
and
COASTAL LINERS, LLC,
Counterclaim¢mt-Appellee.
2010-1119
Appeal from the United States District C0u1't for the
Eastern District of TexaS in case r10. 07-CV-0274, Judge
R0n C1a1'k.
THE OHIO WILLOW WOOD COMPANY,
Plaintiff/C0unterclairn Defendant-Appellee,
V.
THERMO-PLY, INC.,
Defendant/ C0unterclaimant-AppelIant,
and

onto W1LLoW 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.
ON MOTION
Before RAoER, Chief Judge, BRYs0N and MooRE, Circuit
Ju,dges.
RAoER, ChiefJudge.
0 R D E R
The parties jointly move for remand of 2010-1119 due
to settlement. The parties jointly move to dismiss 2010-
1269. 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.
The parties state that they have settled the case and
move to remand 2010-1119 so that the United States
District Court for the Eastern District of Texas can con-
sider whether to vacate the district court's order and final
judgment to the extent the district court held that United
States Patent No. 7,291,182 is invalid
When a case becomes moot through "happenstance," it
is the usual procedure of an appellate court to reverse or

3 OI~I[O WILLOW V. THERMO-PLY
vacate the underlying judgment and remand with a
direction to dismiss. United States v. Munsingwear, Inc.,
340 U.S. 36, 39-40 (1950). This procedure "clears the path
for future relitigation of the issues between the parties
and eliminates a judgment, review of which was pre-
vented through happenstance." Id. at 40. However, when
a case becomes moot while on review due to settlement
between the parties, "the losing party has voluntarily
forfeited his legal remedy by the ordinary processes of
appeal or certiorari thereby surrendering his claim to the
equitable remedy of vacatur." U.S. Bancorp Mortgage Co.
1). Bonner Mall P'ship, 513 U.S. 18, 25 (1994). Bancorp
further discussed "the relevance of our holding to motions
at the court-of-appeals level for vacatur of district-court
judgments." Id. at 28. The Court stated:
We hold that mootness by reason of settlement
does not justify vacatur of a judgment under re-
view. This is not to say that vacatur can never be
granted when mootness is produced in that fash-
ion. As we have described, the determination is an
equitable one, and exceptional circumstances may
conceivably counsel in favor of such a course. lt
should be clear from our discussion, however, that
those exceptional circumstances do not include the
mere fact that the settlement agreement provides
for vacatur-which neither diminishes the volun-
tariness of the abandonment of review nor alters
any of the policy considerations we have dis-
cussed. Of course even in the absence of, or before
considering the existence of, extraordinary cir-
cumstances, a court of appeals presented with a
request for vacatur of a district-court judgment
may remand the case with instructions that the
district court consider the request, which it may
do pursuant to Federal Rule of Civil Procedure
6O(b).

OHIO WILLOW V. THERMO-PLY 4
Id. at 29.
The parties do not discuss what if any exceptional
circumstances there are in this case for the district court
to consider. Before we determine whether to remand or
dismiss this appeal due to settlement, we direct the
parties to respond concerning what exceptional circum-
stances would be presented for the district court that
would justify this court remanding to the district court. lt
is reasonably clear from our reading of Banc0rp that
settlement itself is not an exceptional circumstance which
necessarily warrants vacatur of a district court judgment.
Bancorp, 513 U.S. at 29. And we have refused to vacate a
district court's judgment concerning invalidity when the
case became moot due to settlement, after a district court
also denied a request to vacate the invalidity judgment,
because there were no exceptional circumstances. Aqua
Marine Supply u. AIM Machining, Inc., 247 F.3d 1216
(Fed. Cir. 2001) (no exceptional circumstances required
departure from the general rule of Bancorp that vacatur
was inappropriate when parties had settled action).
Accordingly,
IT ls 0RDERED THAT:
(1) The parties are directed to inform this court, no
later than August 9, 2010, concerning what exceptional
circumstances they intend to assert before the district
court that would warrant a remand by this court. The
parties should attach to their response a copy of the
settlement agreement. The parties may, if necessary, file
confidential and nonconEdential versions of their re-
sponse.
(2) The motions are held in abeyance.

OHIO WILLOW V. THERMO-PLY
FoR THE CoURT
~.lUl_ 2 9 mm /s/ Jan Horbaly
Date J an Horbaly
Jeffrey S. Standley, Esq.
Richard E. Fee, Esq.
Clerk
l B
"s~..°2slat*srsr°*
JUL 2 9 2010
JAN HORBAl.Y
C|.ERl(

