          NOTE: This order is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

           MICROSOFT CORPORATION,
                  Appellant,

                           v.

     INTERNATIONAL TRADE COMMISSION,
                 Appellee,

                          AND

            MOTOROLA MOBILITY, LLC,
                     Intervenor.
               ______________________

                      2012-1445
                ______________________

   Appeal from the United States International Trade
Commission in Investigation No. 337-TA-744.
                ______________________

                    ON MOTION
                ______________________

Before RADER, Chief Judge, PROST, and TARANTO, Circuit
                       Judges.
PER CURIAM.
Concurring opinion filed by Circuit Judge PROST.
2                             MICROSOFT CORPORATION   v. ITC


                        ORDER
    Intervenor Motorola Mobility has filed a motion re-
questing that we dismiss Microsoft’s appeal with respect
to U.S. Patent No. 5,664,133 and vacate the portion of our
October 1, 2013 opinion that addresses the ’133 patent.
Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354,
1364-68 (Fed. Cir. 2013). Motorola contends that the
dispute over the ’133 patent is moot because (as Microsoft
and Motorola agree) the patent expired on December 13,
2013, and that mootness automatically requires the
requested partial dismissal and vacatur. It makes no
argument for dismissal and vacatur here if there is any
discretion in the matter. We deny Motorola’s motion.
    First, we conclude that the case is not moot: there
remains a live controversy. As Motorola explained in its
Statement of Related Cases, Br. for Intervenor Motorola
Mobility at ix, there is a pending case in the Western
District of Washington in which Microsoft alleges in-
fringement of the ’133 patent by Motorola and seeks
damages. Microsoft Corp. v. Motorola, Inc., Case No.
2:10-CV-01577-RSM (W.D. Wash. filed Oct. 1, 2010).
With the agreement of the parties, the district court
stayed that case pending resolution of the Commission
proceeding here, precisely because it “involves the same
issues involved in the proceeding before the Commission.”
28 U.S.C. § 1659. Our ruling on the ’133 patent has a
concrete legal effect on the Microsoft-Motorola dispute
over the same issues in the pending Washington litiga-
tion. Powertech Tech. Inc. v. Tessera, Inc., 660 F.3d 1301,
1308 (Fed. Cir. 2011) (this court’s rulings in cases coming
from the Commission have precedential effect on the
parties in related litigation).
     Because of the pending Washington case, our ruling
on the ’133 patent addresses an actual controversy be-
tween two parties to this case having adverse legal inter-
ests in its resolution: money is at stake, namely, damages
if infringement of the ’133 patent is proved (and invalidity
MICROSOFT CORPORATION v. ITC                               3


and other defenses rejected) in the Washington case. This
court’s ruling thus resolves a live controversy even apart
from whether the Commission can any longer take action
on the ’133 patent or otherwise has any continuing inter-
est in this matter. This is anything but an uncertain,
future, hypothetical, or conjectural controversy. It is an
actual, present controversy over issues affecting concrete
interests of two parties here.
    It does not matter for the constitutional sufficiency of
this controversy whether the present proceeding produces
a judgment granting monetary, conduct-ordering, or other
coercive relief, whether within this court or on remand to
the Commission. Such relief is not a constitutional re-
quirement, as has been established since the Supreme
Court approved of declaratory-judgment actions concern-
ing the interpretation of insurance policies or clarification
of other legal rights. See MedImmune, Inc. v. Genentech,
Inc., 549 U.S. 118, 126-27 (2007); Aetna Life Ins. Co. v.
Haworth, 300 U.S. 227, 240-41, 264 (1937); 10B C.
WRIGHT ET AL., FEDERAL PRACTICE AND PROCEDURE § 2757
(3d ed. 2013). Here, there are concrete collateral conse-
quences of our decision—beyond the relief available in
this proceeding. It would “strain the concepts of moot-
ness” to deem the ’133 patent issues moot when they are
presented in a pending parallel case between two of the
parties disputing them here. Bank of Marin v. England,
385 U.S. 99, 100-01 (1966) (collateral consequence for
other litigation kept controversy alive); see Minnesota
Mining & Mfg. Co. v. Barr Labs, Inc., 289 F.3d 775, 780-
81 (Fed. Cir. 2002) (no mootness if collateral consequences
are not unduly conjectural).
    Our conclusion is confirmed by the parties’ conduct
here until Motorola filed its motion on December 16, 2013,
after the denial of rehearing. Even though our decision
noted that, before granting relief to Microsoft, the Com-
mission would have to consider certain issues it had not
yet considered, Microsoft, 731 F.3d at 1368, and even
though Motorola asked for additional issues to be consid-
4                             MICROSOFT CORPORATION    v. ITC


ered on remand if one was to occur, the parties remained
silent about the impending expiration of the patent (on
December 13, 2013) long past the time it must have
seemed clear to Motorola that the Commission would no
longer be able to grant Microsoft relief, no matter how
this court finally ruled on the ’133 patent. Certainly that
was so as mere days remained before December 13th.
Yet, although litigants must promptly notify the court of
mootness, see Arizonans for Official English v. Arizona,
520 U.S. 43, 68 n.23 (1997), Motorola did not inform us
before we ruled on the rehearing petition that it thought
we could not constitutionally do so because the imminent
expiration of the patent would prevent Commission action
regardless of the merits of the rehearing petition.
Motorola raised the point on December 16th, only after
failing in its attempt to persuade us to grant rehearing.
The natural implication is that the availability of Com-
mission action on remand from this court was not needed
for the controversy over the ’133 patent to remain a live
one in this court.
    Second, even if the present case were moot as to the
’133 patent, vacatur would not be warranted. Motorola’s
sole argument is that vacatur of an already-rendered
decision is automatic upon finding mootness. But the
Supreme Court’s decision in U.S. Bancorp Mortgage Co. v.
Bonner Mall Partnership, 513 U.S. 18 (1994), confirms
that, contrary to Motorola’s position, what action to take
regarding an issued decision is not automatically deter-
mined by mootness, but is a matter of equitable discretion
(to be exercised, like all discretion, within governing legal
constraints, see Martin v. Franklin Capital Corp., 546
U.S. 132, 139 (2005)).
    In U.S. Bancorp, the Court held that, upon mootness,
an Article III court may not decide the merits of the case,
513 U.S. at 20-22, but that it is a matter of discretion,
governed by equitable principles, whether an Article III
reviewing court should vacate the judgment of a reviewed
MICROSOFT CORPORATION v. ITC                             5



court and order dismissal, id. at 21-25. The Court then
held that the reviewing court should not do so merely
because mootness results from a settlement that calls for
vacatur. Id. at 29. The Court indicated, too, that a dis-
trict court may consider whether to vacate its own judg-
ment under Fed. R. Civ. P. 60(b). U.S. Bancorp, 513 U.S.
at 29.
    The Court’s holding and analysis effectively establish
that mootness does not automatically require vacatur of a
previously made decision, which, instead, is a matter of
reasoned discretion. For purposes of that threshold
proposition, nothing in U.S. Bancorp makes material how
mootness comes about, i.e., whether it results from set-
tlement or otherwise: the case is moot regardless, but
vacatur is a matter of equitable discretion. Of course,
U.S. Bancorp makes clear that the origin of mootness
does affect how the discretion might be exercised. But
Motorola makes no argument beyond the contention that
there is no discretion in the matter, which U.S. Bancorp
refutes. That is enough to reject Motorola’s request for
vacatur even if we assume that the ’133 patent dispute is
moot here.
    In addition, the great weight of authority, through
holdings or analysis, supports not only (a) treating the
question of what a court should do when mootness arises
after decision as subject to equitable and pragmatic
considerations, but (b) refusing to disturb a decision when
an issue becomes moot only after denial of rehearing on a
controversy-specific issue that is not within the normal
standards for Supreme Court review, so that no further
decision is needed, available as of right, or likely. See
Finberg v. Sullivan, 658 F.2d 93, 96 n.4 (3d Cir. 1983) (en
banc); Humphreys v. Drug Enforcement Admin., 105 F.3d
112, 114-16 (3d Cir. 1996); Bastien v. Office of Sen. Ben
Nighthorse Campbell, 409 F.3d 1234, 1235-36 (10th Cir.
2005); In re Grand Jury Investigation, 399 F.3d 527, 529
n.1 (2d Cir. 2005); United States v. Payton, 593 F.3d 881,
6                             MICROSOFT CORPORATION   v. ITC



883-85 (9th Cir. 2010); see also TiVo Inc. v. Echostar
Corp., 429 F. App’x 975 (Fed. Cir. 2011) (en banc) (non-
precedential order). That authority supports denial of
Motorola’s motion here: Motorola does not deny that the
matter was a live controversy when this court decided it;
nothing remained upon denial of rehearing but the minis-
terial act of issuance of the mandate by the clerk’s office;
the ’133 patent issues are far from being certworthy, so
that there is neither entitlement to nor a substantial
chance of further review that disturbs the patent-specific
merits rulings; and the fully considered decision matters
for party-specific collateral litigation, as indicated by
Motorola’s course of conduct in seeking to alter the ruling
on rehearing (without suggesting mootness) and in seek-
ing the present vacatur. In these circumstances, we
would find vacatur unwarranted even if the dispute were
moot. Compare In re Pattullo, 271 F.3d 898 (9th Cir. 2001)
(vacating where event determined to moot case occurred
before appellate decision was rendered); Clarke v. United
States, 915 F.2d 699, 712 (D.C. Cir. 1990) (vacating where
dispute became moot while rehearing was pending); In re
Ghandtchi, 705 F.2d 1315 (11th Cir. 1983) (vacating
where case became moot while time to seek rehearing
remained); United States v. Caraway, 483 F.2d 215 (5th
Cir. 1973) (same). 1



    1   In Eisai Co., Ltd. v. Teva Pharmaceuticals. USA,
Inc., 131 S. Ct. 2991 (2011), the Supreme Court ordered
vacatur for mootness of this court’s judgment in Teva
Pharmaceuticals. USA, Inc. v. Eisai Co., Ltd., 620 F.3d
1341 (Fed. Cir. 2010). In that case, as both parties agreed
in their certiorari papers, an event that occurred while a
petition for panel and en banc rehearing was pending (of
which Eisai immediately notified the court) had ended
any live controversy between the parties over the patents
at issue, on which Eisai had already given disclaimers or
MICROSOFT CORPORATION v. ITC                               7



    Two final points. We see no need to dismiss the ap-
peal in part. As explained, we do not think that the
dispute is moot even now. Even if it were, we would not
vacate the decision for the reasons given; and Motorola
has not explained how dismissal alone matters or why it
is required where vacatur is not. In addition, even with-
out this Order, but certainly with it, the Commission is
not compelled to take action that the post-decision expira-
tion of the patent now makes unlawful. See, e.g., Tronzo
v. Biomet, Inc., 236 F.3d 1342, 1349 (Fed. Cir. 2001).
   Accordingly,
   IT IS ORDERED THAT:
   Intervenor Motorola Mobility LLC’s Motion to Dismiss
Microsoft’s Appeal with Respect to the ’133 patent is
DENIED.
                                   FOR THE COURT

January 3, 2014                    /s/ Daniel E. O’Toole
    Date                           Daniel E. O’Toole
                                   Clerk of Court




covenants not to sue. See Teva, 620 F.3d at 1345; Petition
for Certiorari, No. 10-1070, 2011 WL 720842; Brief in
Opposition, No. 10-1070, 2011 WL 1633408. Further
review on the issue actually decided by this court (justici-
ability of a dispute for declaratory-judgment purposes)
was accordingly impossible. And Eisai argued that the
issue this court had decided warranted Supreme Court
review. Petition for Certiorari at *3. The leading treatise
on Supreme Court practice indicates that certworthiness
of the underlying “merits” issue that might be presented
to the Supreme Court may be relevant to the Court’s
vacatur-for-mootness practice. See E. GRESSMAN ET AL.,
SUPREME COURT PRACTICE 939 & n.33 (9th ed. 2007).
          NOTE: This order is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                 ______________________

            MICROSOFT CORPORATION,
                   Appellant,

                            v.

     INTERNATIONAL TRADE COMMISSION,
                 Appellee,

                           AND

            MOTOROLA MOBILITY, LLC,
                     Intervenor.
               ______________________

                       2012-1445
                 ______________________

   Appeal from the United States International Trade
Commission in Investigation No. 337-TA-744.
                ______________________

                     ON MOTION
                 ______________________

PROST, Circuit Judge, concurring.
    I concur in the denial of Motorola’s Motion to Dismiss
Microsoft’s Appeal with Respect to the ’133 patent. How-
ever, I would reach the same result for a different reason.
Unlike the majority, I do believe that Microsoft’s appeal
2                            MICROSOFT CORPORATION   v. ITC



with respect to the ’133 patent has been rendered moot by
the expiration of the patent. In my opinion, the existence
of a related case in the Western District of Washington
does not affect the mootness of the case pending before
this court. Although the majority is correct that our
ruling “addresses an actual controversy between two
parties to this case having adverse legal interests in its
resolution,” that controversy is no longer present in this
case; it exists only in the Washington case. Majority at 2.
However, I agree with the majority that whether we
should dismiss the appeal or vacate our ruling is a discre-
tionary matter, and I would deny Motorola’s motion on
that basis. In addition to the reasons provided by the
majority, I believe that the existence of the Washington
case weighs strongly in favor of exercising our discretion
not to vacate our opinion, as the parties would be required
to “start all over again” with respect to the disputes
already resolved therein. Bank of Marin v. England, 385
U.S. 99, 100-01 (1966).
