No Specific Threat of Infringement Litigation Needed to Establish Standing for IPR Appeal

| Jeremy Anapol


Before Moore, Taranto, and Chen. Appeal from the Patent Trial and Appeal Board.

Summary: A patent challenger can establish standing to appeal a final written decision in an IPR by showing that its past, present, or anticipated future activity would give rise to a possible infringement suit, even if the patentee has not specifically alleged infringement.

Adidas requested inter partes review of two Nike patents directed to methods of manufacturing an article of footwear. The PTAB held that Adidas had not proven the challenged claims unpatentable. Adidas appealed.

Nike alleged that Adidas lacked standing to appeal, arguing that Adidas could not establish the requisite injury in fact because Nike had not sued or threatened to sue Adidas for infringing the challenged patents. The Federal Circuit disagreed.

The Federal Circuit found that (1) Nike had asserted one of the challenged patents against a third-party product similar to Adidas’ footwear, (2) Adidas and Nike are direct competitors, and (3) in the past Nike had accused Adidas of infringing one of its patents and expressed its intent to protect Nike’s rights against further infringement. Accordingly, the Federal Circuit held that Adidas had standing.

On the merits, the Federal Circuit found that the Board did not err in its obviousness analysis and thus affirmed the decisions below.

Editor: Paul Stewart