No standing to appeal adverse PTAB ruling where product is still being designed

JTEKT was designing a drivetrain for four-wheel-drive vehicles and became aware of a patent that caused it some concern, so it filed a petition for inter partes review (IPR) challenging certain claims of the patent. In its final written decision, the Patent Trial and Appeal Board (PTAB) concluded that the petitioner had not shown that certain of the challenged claims were unpatentable. The petitioner filed an appeal to the Federal Circuit, which dismissed the appeal.

After observing that the Patent Act allows anyone to challenge a patent through an IPR, the court summarized its decisions holding that the rigors of Article III standing were not so forgiving. Here, even though the petitioner had been designing a new drivetrain, and had submitted declarations in an effort to establish jurisdiction, the Federal Circuit concluded that the petitioner lacked standing to appeal. The court first noted that the absence of a product on the market did not automatically foreclose appellate review; parties do not need to incur liability to create a sufficient injury to invoke the court’s jurisdiction. “But where the party relies on potential infringement liability as a basis for injury in fact, but is not currently engaging in infringing activity, it must establish that it has concrete plans for future activity that creates a substantial risk of future infringement or likely cause the patentee to assert a claim for infringement.” Here, the petitioner’s declarations established that the product design was not final. The design was still being validated and was continuing to evolve and “may change until it is completely finalized.” While the declarations referred to a “potential risk of infringement,” the petitioner’s evidence established that since the designs were not final, “there is nothing that can be analyzed for infringement.” While “IPR petitioners need not concede infringement to establish standing to appeal,” there must be some facts showing a concrete and substantial risk of infringement before the court will have jurisdiction over a petitioner’s appeal from a PTAB final written decision.

A copy of the opinion can be found here