In AVX v Presidio, the Federal Circuit again found the Petitioner could not appeal a partial loss because it lacked standing to appeal as there was no underlying lawsuit on the patent involved in the IPR proceeding.

The Court found both arguments AVX made for standing unpersuasive.

AVX first argued that Section 315(e) estopped AVX from being able to attack validity of the surviving claims if Presidio ever sues AVX on the patent. This Court stated it already rejected this argument in Phigenix and JTEKT. And, the Court stated the issue was not properly before them whether Section 315(e) barred a party not currently in a law suit from being able to assert invalidity if a suit were later filed. Rather, the Court held “If, in the future, a live controversy over the upheld claims arises between Presidio and AVX, and if either an infringement action or declaratory judgment action involving those claims is filed in district court, AVX can, in such an action, test whether § 315(e) bars it from raising the obviousness challenges that the Board reviewed and rejected.”

AVX next argued the partial loss “injures AVX because the decision reduces AVX’s ability to compete with Presidio. AVX relies on decisions that, in nonpatent contexts, have found ‘competitor standing’ to challenge certain government actions.” The Court disagreed stating “the rationale for finding standing in those cases does not carry over to support standing in the present context, where AVX has no present or nonspeculative interest in engaging in conduct even arguably covered by the patent claims at issue.” The Court explained “[i]n all the cases to which we have been pointed in which standing rested on competitive harm, the challenged government action nonspeculatively threatened economic injury to the challenger by the ordinary operation of economic forces.” In the patent context, the Court stated “[a] patent claim could have a harmful competitive effect on a would-be challenger if the challenger was currently using the claimed features or nonspeculatively planning to do so in competition, i.e., if the claim would block the challenger’s own current or nonspeculative actions in the rivalry for sales.”

The Court went on to summarize its current litany of cases finding and not finding standing from PTAB appeals. In the end, standing requires inevitability of an infringement suit or some “undertaking or planning activity that gives it a concrete stake in obtaining an adjudication of unpatentability.”

This article appeared in the May 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.