By: Kaitlin Crowder and Dave Maiorana

Any person or entity may file an IPR proceeding to invalidate a patent, regardless of whether it faces a specific threat of infringement.  An adverse decision in an IPR proceeding is appealable only to the Federal Circuit.  However, the Federal Circuit, as an Article III Court, is of limited jurisdiction.  As a result, questions have been raised regarding standing in IPR appeals.  A patent challenger has standing in the Federal Circuit only when it has (1) suffered an injury in fact that is (2) fairly traceable to the patent owner’s conduct (3) for which a favorable judicial decision is likely to afford relief.  In contrast, administrative agencies, such as the PTAB, need not adhere to these requirements in adjudicating disputes.

In E.I. DuPont De Nemours & Co. v. Synvina, C.V., the Federal Circuit addressed the injury-in-fact requirement in the case of an appeal of an adverse PTAB decision.  Synvina, the patentee in this case, argued that DuPont lacked standing to challenge Synvina’s method patent because Synvina had not sued DuPont for infringement.  Therefore, Synvina argued, DuPont’s injury was only speculative, depriving DuPont of standing for lack of injury in fact. DuPont argued that it did not need to demonstrate a specific threat of infringement, but needed to show only a significant risk of infringement liability.  DuPont asserted that it faced such a risk for multiple reasons, including that one of its manufacturing plants was capable of producing the product that was the subject matter of the patent under conditions within the claimed temperature and pressure ranges.

The court agreed with DuPont, likening the case to an action for a declaratory judgment. When a challenger asserts a controversy “of sufficient immediacy and reality,” judicial relief may be warranted.  Sufficient immediacy and reality may exist when a patent challenger has engaged in significant research or commercial development that implicates the patent or has concrete plans to do so.  Therefore, an entity need not have actually produced a product by an infringing method in order to challenge a patent claiming said method.  At least under the facts of this case.

The Federal Circuit also addressed the burden-shifting framework normally applicable to obviousness inquiries.  Whether this framework applies to IPR proceedings was an issue of first impression.  In both district court cases and IPR proceedings, a patent challenger has the burden to show unpatentability.  However, where claimed ranges in a challenged patent overlap with claimed ranges in the prior art, there is a rebuttable presumption of obviousness.  The same framework also pertains to patent examinations at the USPTO.

The Federal Circuit made it clear that this framework likewise applies to IPR proceedings.  The burden of persuasion to show obviousness remains with the patent challenger.  If the patent challenger shows that a range claimed in the challenged patent overlaps with a range disclosed in the prior art, the burden of production then shifts to the patentee to produce evidence that tends to show that the overlapping range would not have been obvious in light of the prior art. Despite this burden shifting, the ultimate burden of persuasion always remains with the challenger.


A patent challenger satisfies the injury-in-fact requirement for Article III standing when it has taken, or has concrete plans to take, an action that implicates a patent and that is likely to cause the patentee to instigate a claim.  Practitioners considering filing an IPR for a client who has not been sued for infringement should investigate whether there might be issues with the client’s standing should the IPR go to appeal.  Further, in the context of overlapping ranges, the burden shifting framework in obviousness challenges that has historically applied to district court cases and patent prosecution also applies in IPR proceedings.  In such a case, a patentee must be able to come forward with evidence that can rebut the presumption that any overlap would have been obvious.  Patent owners who are faced with an IPR, particularly for claims that recite ranges, should investigate and gather any available evidence to rebut an obviousness presumption.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a United States Patent and Trademark Office (USPTO) Examiner and more than 25 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the International Trade Commission (ITC). Dave has experience in diverse technology areas, including e-cigarettes, teeth whitening, diapers, fem care, antibodies, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.