By Jihong Lou and Matt Johnson

Update: The Supreme Court has denied cert in RPX v. ChanBond.

In past decisions, the Federal Circuit has made clear that a petitioner appealing a PTAB’s final written decision upholding the patentability of challenged claims after an AIA trial must establish Article III standing.  In particular, the petitioner must demonstrate an injury-in-fact from the adverse PTAB decision that is both (a) concrete and particularized, and (b) actual or imminent, not conjectural or hypothetical.  See, e.g., our recent PTAB Litigation Blog article on the standing-to-appeal issue.  We report here two recent developments.

On May 9, the Solicitor General (“SG”) filed a brief in RPX v. ChanBond, expressing the views of the United States that the Supreme Court should deny RPX’s petition for certiorari.  SG Br. 1.  RPX, an unsuccessful IPR petitioner, sought review of the Federal Circuit’s dismissal of its appeal for lack of Article III standing upon finding that RPX failed to show any injury-in-fact.  RPX’s petition for certiorari presents the following question:  whether “a petitioner for [IPR] has Article III standing to appeal the [PTAB]’s final written decision upholding the challenged patent claims, where the petitioner disagrees with the Board’s decision but suffers no concrete or particularized harm from the ongoing existence of the patent.”  Last fall, the Supreme Court invited the SG to express the views of the United States.

In the SG’s views, the Federal Circuit’s decision in RPX does not conflict with any decision of the Supreme Court or another court of appeals.  In addition, the underlying PTAB decision did not violate RPX’s rights under the AIA, and even if such statutory violation had occurred, it would not have sufficed to confer Article III standing under the Constitution.  SG Br. 8–9.  Several arguments in the SG Brief are worth noting.

First, the SG explains that because the PTAB is not an Article III tribunal, and Congress has not required an IPR petitioner to establish an injury-in-fact from the challenged patent, “petitioner’s inability to show such an injury did not prevent it from requesting [IPR] and participating in the Board proceedings once review was instituted.”  SG Br. 10.  “Petitioner’s ability to invoke the jurisdiction of the Federal Circuit, however, does depend on such a showing.”  SG Br. 11 (emphasis added).  In the SG’s view, neither the fact that RPX requested and participated in the IPR, nor the PTAB’s adverse final written decision, in and of themselves, confers RPX Article III standing to challenge the PTAB decision.  SG Br. 11–12.

Second, the SG rejects RPX’s argument that the PTAB’s decision subjected it to an injury by depriving it of rights conferred by the AIA.  SG Br. 12–15.  The SG explains that RPX “did not suffer a deprivation of any of the procedural rights that the AIA confers,” and that the AIA does not “give petitioners of [IPR] the substantive statutory right to compel the Patent Office to cancel unpatentable patent claims.”  SG Br. 12–13.  Rather, according to the SG, the AIA only provides that once the IPR is instituted and not dismissed, the PTAB “shall issue a final written decision with respect to the patentability of any patent claim challenged by petitioner,” and the Director “shall issue and publish a certificate” to effectuate the PTAB’s decision once the time for appeal has expired or any appeal has terminated.  SG Br. 13 (citing 35 U.S.C. § 318).  In other words, “the AIA does not guarantee a particular outcome for a person that requests [IPR].”  SG. Br. 13.

Third, the SG also expressly rejects RPX’s argument that the PTAB’s decision has invaded its “statutory right” to file future petitions for IPR in view of the estoppel provision of § 315(e).  According to the SG, the AIA merely provides petitioners “the opportunity to file petitions for [IPR] of claims in the [challenged] patent unless and until one of those petitions results in a final written decision.”  SG Br. 14.

Fourth, the SG likewise rejects the arguments of amicus curiae NYIPLA that under §§ 319 and 141(c), any party to an IPR “dissatisfied” with the PTAB’s final written decision has a right to obtain appellate review.  SG Br. 16.  In the SG’s view, NYIPLA’s construction of §§ 319 and 141(c) would render the statute unconstitutional “as applied to appeals like this one, in which the appellant disagrees with the Board’s decision but suffers no concrete injury from it.”  SG Br. 17.  Applying the doctrine of constitutional avoidance, the SG contends that “the term ‘dissatisfied with’ [in § 319] should be construed to mean ‘aggrieved by’ or injured by.’”  SG Br. 18.  Citing the Supreme Court’s precedent, the SG explains that in enacting the AIA, Congress presumably understood that “the requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute.”  SG Br. 18.

Fifth, citing the Federal Circuit’s holding in JTEKT (petition for certiorari pending), the SG explains that a petitioner could establish an injury-in-fact by “establishing that it has concrete plans for future activity that creates a substantial risk of future infringement or likely will cause the patentee to assert a claim of infringement.”  SG Br. 20.  The SG also notes that the Federal Circuit “did not suggest that this is the only way a petitioner for [IPR] could show concrete harm from the Boards’ decision,” and that the Federal Circuit “has not adopted a categorical rule” that Article III standing only exists where petitioners “either have been accused of infringement of the challenged patent or imminently will be.”  SG Br. 20.  Because RPX has failed to “identify any plausible alternative ground for concluding that the Board’s decision caused it concrete injury,” the SG recommends the Supreme Court to deny RPX’s petition.

Moreover, on May 13, the Federal Circuit issued a decision in AVX v. Presidio Component, dismissing AVX (IPR petitioner)’s appeal for lack of Article III injury-in-fact.  AVX made two arguments to support its Article III standing to appeal, but the Federal Circuit rejected both.

First, AVX argued that it is injured by the PTAB’s final written decision because the statutory estoppel provision of § 315(e) would prevent it from asserting the same challenges, if Presidio (the patentee) asserts the challenged claims against AVX in the future.  The court rejected that argument of injury based on § 315(e), noting that it has done so in prior decisions.  Interestingly, the court also noted that it has not decided “whether § 315(e) would have estoppel effect even where the IPR petitioner lacked Article III standing to appeal the Board’s decision.”  Slip op. at 8.  The court cited cases applying the “traditional preclusion principle—that neither claim nor issue preclusion applies when appellate review of the decision with a potentially preclusive effect is unavailable.”  Id.  But it declined to decide this issue in AVX because the parties have not briefed the issue, and because there is presently no live controversy on this issue arising from an infringement or declaratory judgment action involving the upheld claims.  Id. at 9.

Second, AVX also argued that the PTAB’s decision reduced its ability to compete with Presidio, citing cases that have found “competitor standing” to challenge certain government actions.  Slip Op. at 9.  The court rejected that argument as well.  Id. at 9–16.  The court explained that “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 activities that are covered by the upheld patent claims.  Id. at 9.


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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.