NOTE: This order is nonprecedential 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

FLFMC, LLC, 

Plaintiff-Appellant, 

v. 

WHAM-O, INC., 

Defendant-Appellee. 

v. 

UNITED STATES, 

Intervenor. 

__________________________ 

2011-1067 

__________________________ 

Appeal from the United States District Court for the 

Western District of Pennsylvania in case no. 01-CV-0435, 

Judge Arthur J. Schwab. 

__________________________ 

Decided: October 19, 2011 

__________________________ 

Before LINN, DYK, and PROST, Circuit Judges. 

PER CURIAM. 

O R D E R 
2 FLFMC v. WHAM-O

FLFMC, LLC (“FLFMC”) appealed from a decision of 

the United States District Court for the Western District 

of Pennsylvania dismissing its complaint, under 35 U.S.C. 

§ 292, for lack of Article III standing. Wham-O, Inc. 

(“Wham-O”) asserted alternative grounds for affirmance, 

including challenges to the constitutionality of § 292(b) 

under the Take Care Clause of Article II § 3 and under 

the Appointments Clause of Article II § 2. This court 

heard oral argument on July 7, 2011. 

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”). Accordingly, on September 16, 2011, the court ordered the parties to advise the 

court of the effect of this legislation on the status of the 

case. 

On September 30, 2011, FLFMC, Wham-O, Inc., and 

the United States filed a joint-response to the court’s 

order. In this response, the parties agreed that the Act 

rendered this appeal and the standing determination of 

the district court moot. Accordingly, they requested the 

court to vacate the district court’s decision dismissing the 

case for lack of standing and to dismiss this appeal. 

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 
 FLFMC v. WHAM-O 3

moot.1 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 

determination 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 United States v. 

Munsingwear, Inc., 340 U.S. 36, 40 (1950))); Tafas v. 

Kappos, 586 F.3d 1369, 1371 (Fed. Cir. 2009) (“Vacatur . . . is appropriate if the mootness arises from external 

causes over which the parties have no control” (citing U.S. 

Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 25 

(1994))). 

Accordingly, 

IT IS ORDERED THAT: 

(1) The district court’s decision dismissing the case 

for lack of standing is vacated as moot. 

(2) The case is remanded with instructions to dismiss. 

(3) This appeal is dismissed. 

(4) Each party shall bear its own costs. 

 1 The parties do not challenge, and this court does 

not address, the constitutionality of the retroactive application of the amendments to § 292. 
4 FLFMC v. WHAM-O

 FOR THE COURT, 

October 19, 2011 /s/JanHobaly______ 

 Date Jan Horbaly 

 Clerk 

cc: David G. Oberdick, Esq. 

 Andrew J. Dhuey, Esq. 

 Douglas N. Letter, Esq.