2024 Federal Circuit IP Appeals – Platinum Optics Tech. Inc. v. Viavi Sols. Inc., 111 F.4th 1378 (Fed. Cir. Aug. 16, 2024) (Moore, Taranto, Cecchi)

Platinum Optics Technology Inc. (PTOT) filed an inter partes review against certain claims of Viavi’s patent related to bandpass filters. Prior to the IPR, Viavi filed two civil actions against PTOT for, among other things, infringement of the patent but, in both proceedings, the patent infringement claims were dismissed with prejudice. Subsequently, the Board issued its final written decision holding that PTOT failed to show the challenged claims were unpatentable.

On appeal, the Federal Circuit dismissed, holding that PTOT did not have proper standing to appeal. Although a party does not need Article III standing in order to file an IPR, standing is required in order to appeal the Board’s decision to the Federal Circuit. This is because the “court’s jurisdiction to review final decisions of the Board is limited to ‘Cases’ and ‘Controversies’ under Article III of the U.S. Constitution.” One of the requirements to prove standing, relevant here, is that the appellant has “suffered an injury in fact.” PTOT presented two theories to support its contention that it has suffered an injury in fact. The court rejected both.

First, PTOT contended that its continued distribution of the accused bandpass filters in the prior civil action “creates a likelihood that Viavi will sue again.” The court noted “mere speculation about a possibility of suit, without more, is insufficient to confer standing.” In support, PTOT relied on a letter from Viavi contending that it would not be possible for PTOT to fulfill its supply agreements with non-infringing products. But PTOT ignored that this letter was sent prior to the earlier civil actions, which had been dismissed with prejudice. “[U]nsubstantiated speculation about a threat of future suit is insufficient to show a substantial risk of future infringement or that Viavi is likely to assert a claim against it for the continued distribution of [previously accused] bandpass filters.”

Second, PTOT contended that its continued development of new bandpass filters supports a concern that Viavi would again assert the patent. As the court noted, PTOT did not “identify any specific, concrete plans for PTOT to develop a product that may implicate the [] patent.” Specifically, PTOT presented declaration evidence that included only “vague and conclusory statements,” but did not “provide any detailed plans for development of these new filters,” nor “explain the particulars of these new models, or how the models may relate to the [] patent.” Further, PTOT did not point to any evidence that Viavi had made any threat regarding bandpass filters still in development.

This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.