Cite as: 508 U. S. 83 (1993)
Opinion of the Court
counterclaimant had failed to prove invalidity. On appeal, the court affirmed the noninfringement holding, and vacated the judgment on the counterclaim as moot. In his opinion for the panel, Chief Judge Markey explained:
"There being no infringement by J & J of any asserted claim, there remains no case or controversy between the parties. We need not pass on the validity or enforceability of claims 1 and 2. . . . [C]f. Altvater v. Freeman, 319 U. S. 359, 363-65 . . . (1943) ('To hold a patent valid if it is not infringed is to decide a hypothetical case,' but a counterclaim for invalidity is not mooted where counterclaim deals with additional patent claims and devices not involved in the complaint and with license issues.).
. . . . . "The judgment that J & J has not proven claims 1 and 2 invalid or unenforceable is vacated and the appeal from that judgment is dismissed as moot." Id., at 634.
A footnote emphasized that there was no longer any dispute between the parties beyond the specific charge of infringement that had been resolved by the finding of non-infringement.11
The three opinions in Vieau and Fonar indicate that the Federal Circuit's practice of vacating declaratory judgments of patent validity (or invalidity) is limited to cases in which the court is convinced that the finding of noninfringement has entirely resolved the controversy between the litigants
11 "The record contains no assertion that J & J infringes the '832 patent by any methods other than those found not to infringe, or that J & J's machines infringe the nonasserted apparatus claims. J & J's counterclaim merely repeated the affirmative defenses of invalidity and unenforceability and the verdict form, with no objection by J & J, dealt only with the asserted claims. J & J's motion for JNOV dealt only with claims 1 and 2." Fonar, 821 F. 2d, at 634, n. 2.
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