In a recent decision in Ocean Tomo, LLC v. Patent Ratings, LLC, CBM2015-00157, the PTAB ruled that a real and substantial controversy regarding infringement of a patent, conferring declaratory judgment standing on the petitioner to file for CBM review, is not established by a litigation not related to the patent.

In Ocean Tomo, Petitioner asserted standing for requesting a CBM review of patent 9,075,849, based on litigation in an Illinois district court between Petitioner and Patent Owner (PO). In the Illinois litigation, PO alleged that Petitioner breached a license agreement. Citing Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), Petitioner argued that PO’s allegation “constitute[s] a threat that [PO] will bring suit against [Petitioner] based on [PO’s] Patents and creates a reasonable apprehension by [Petitioner] that [PO] will enforce [its] Patents against [Petitioner].” Paper 17 at 7.

The PTAB rejected this argument, finding that this case is factually distinguishable from MedImmune, as this case does not involve a “‘well defined’ dispute . . . concerning the validity and infringement of a particular patent with respect to a particular identified product.” Paper 17 at 8.

According to the PTAB, “[t]he parties’ contract, tort, and related causes of action concern and arise from the fractured employment and business relationship . . . , not from charges of infringement of the ’849 patent.” Paper 17 at 9. “The License Agreement grants a ‘royalty-free’ license to the [proprietary software and database] patents and requires payments only for Petitioner’s commercial use of [Patent Owner’s] proprietary software and databases, not its patents.” Paper 17 at 9. Additionally, “the challenged ’849 patent was not even issued until over five months after Patent Owner’s amended counterclaim alleging breach of the License Agreement was filed in the Illinois action,” Paper 17 at 8, so, in all of Petitioner’s allegations, “there [was] no mention of the ’849 patent,” Paper 17 at 9.

Thus, the PTAB denied institution of the review for lack of standing for filing a petition for CBM review.

In view of this decision, if a litigation between a patent owner and a petitioner does not relate to a patent for which the petitioner desires to seek CBM review, it may be difficult for the petitioner to establish standing unless other facts are present that support a real and substantial controversy regarding infringement of the patent.