An IPR Appellant Must Establish an Injury to Have Standing

August 10, 2018
Post by Blog Staff

In JTEKT Corp. v. GKN Auto. Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018), the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an inter partes review (IPR) appeal due to lack of standing. The requirement for an appellant to establish an injury in fact remains firm.

JTEKT petitioned for an IPR on a patent owned by GKN. The Patent Trial and Appeal Board (PTAB) instituted the review and held that two claims were obvious in light of other technology, but upheld other claims. JTEKT appealed PTAB’s decision regarding the upheld claims, and GKN based a motion to dismiss on lack of standing.

According to the IPR statute, any person or entity may petition the Patent Office to institute an IPR proceeding. There is not a requirement that the petitioner have Article III standing because petitioners need not have a concrete stake in the outcome of the IPR proceeding. An unsuccessful petitioner may appeal an adverse IPR written decision to the CAFC, however the court has stated that the IPR statute cannot be read to waive the Article III injury-in-fact requirement for appeal to the federal court. The CAFC, in this decision, reaffirms that an appellant has an obligation to establish an injury in fact to have standing.

The Supreme Court has made it clear that an injury in fact must not be conjectural or hypothetical, but both concrete and particularized. Moreover, CAFC cases establish that typically the requisite injury for an IPR appeal is that the appellant must show that it is engaged, or likely will engage, in activity likely to cause infringement, or has affected contractual rights. While not having a product currently on the market does not preclude petitioning for an IPR decision appeal, the petitioner cannot rely on potential infringement liability. There must be concrete plans for future activity likely to create a substantial risk of future infringement.

JTEKT did not meet this burden, and did not establish that its planned product would create a substantial risk of infringement and GKN has not alleged so. JTEKT stated that their products are in development, currently evolving, and not finalized, with just a potential risk of infringement. The CAFC held that because there is no concrete or substantial risk of infringement, nor is it likely to lead to charges of infringement, there is no injury.

The CAFC also rejected JTEKT’s contention that IPR estoppel constitutes an injury.

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