United States Court of Appeals for the Federal Circuit ______________________

PACKET INTELLIGENCE LLC, Plaintiff-Appellee

v.

NETSCOUT SYSTEMS, INC., NETSCOUT SYSTEMS TEXAS, LLC, FKA TEKTRONIX TEXAS, LLC, DBA TEKTRONIX COMMUNICATIONS, Defendants-Appellants ______________________

2022-2064 ______________________

Appeal from the United States District Court for the Eastern District of Texas in No. 2:16-cv-00230-JRG, Chief Judge J. Rodney Gilstrap. ______________________

Decided: May 2, 2024 ______________________

PAUL SKIERMONT, Skiermont Derby LLP, Dallas, TX, argued for plaintiff-appellee. Also represented by ALEXANDER EDWARD GASSER, STEVEN WAYNE HARTSELL, SARAH ELIZABETH SPIRES; MIEKE K. MALMBERG, Los Ange- les, CA.

MICHAEL JOHN LYONS, Morgan, Lewis & Bockius LLP, Palo Alto, CA, argued for defendants-appellants. Also rep- resented by AHREN CHRISTIAN HSU-HOFFMAN, AUSTIN ZUCK; JASON D. FRANK, Boston, MA; JULIE S. GOLDEMBERG, Case: 22-2064 Document: 47 Page: 2 Filed: 05/02/2024

2 PACKET INTELLIGENCE LLC v. NETSCOUT SYSTEMS, INC.

ERIC KRAEUTLER, Philadelphia, PA; WILLIAM R. PETERSON, Houston, TX. ______________________

Before LOURIE, HUGHES, and STARK, Circuit Judges. STARK, Circuit Judge. NetScout Systems, Inc. and NetScout Systems Texas, LLC (collectively, “NetScout”) appeal the amended final judgment entered by the U.S. District Court for the East- ern District of Texas (“Eastern District”), contending that the district court erred in granting enhanced damages for willful infringement and in setting the rate and effective date for an ongoing royalty. In view of the parallel appeals in which we have affirmed the final written decisions of the Patent Trial and Appeal Board (“Board”) finding all of the patent claims asserted by Packet Intelligence LLC (“Packet”) in this case invalid, we vacate the district court’s amended final judgment and remand with instructions to dismiss the case as moot. I This case is before us for the second time. Previously, in 2020, we considered NetScout’s appeal from the judg- ment of the Eastern District following a bench trial and jury verdict. The Eastern District had held: (1) NetScout willfully infringed claims 10 and 17 of U.S. Patent No. 6,665,725 (“’725 patent”), claims 1 and 5 of U.S. Patent No. 6,839,751 (“’751 patent”), and claims 19 and 20 of U.S. Pa- tent No. 6,954,789 (“’789 patent”); (2) no asserted claim was shown to be unpatentable or invalid under 35 U.S.C. §§ 101, 102(a), or 102(f); and (3) Packet was entitled to (a) $3.5 million in pre-suit damages, (b) $2.25 million in post- suit damages, (c) $2.8 million in enhanced damages, and (d) an ongoing royalty of 1.55% for future infringement. In that first appeal, we “reverse[d] the district court’s pre-suit damages award and vacate[d] the court’s enhancement of that award.” Packet Intel. LLC v. NetScout Sys., Inc., 965 Case: 22-2064 Document: 47 Page: 3 Filed: 05/02/2024

PACKET INTELLIGENCE LLC v. NETSCOUT SYSTEMS, INC. 3

F.3d 1299, 1303 (Fed. Cir. 2020) (“Packet I”). We “af- firm[ed] the district court’s judgment in all other respects.” Id. By mandate issued on October 23, 2020, we remanded the case to the Eastern District. During the pendency of the remand, the Board issued final written decisions in inter partes reviews (“IPRs”) ini- tiated by third parties Juniper Networks, Inc. and Palo Alto Networks, Inc. Those final written decisions found all claims asserted in this case unpatentable as obvious. See Juniper Networks, Inc. v. Packet Intel. LLC, IPR2020- 00336, 2021 Pat. App. LEXIS 5456 (P.T.A.B. Sept. 9, 2021) (considering ’725 pate