Standing to Appeal IPR Denied Where Petitioner Failed to Provide Evidence of Competitive Harm and Economic Loss

GENERAL ELECTRIC CO. V. UNITED TECHNOLOGIES CORP.

Before Reyna, Taranto, and Hughes.  Appeal from the Patent and Trial Appeal Board.

Summary: A petitioner who loses an IPR must proffer specific evidence of competitive injury or economic loss to establish Article III standing to appeal to the Federal Circuit.

General Electric (“GE”) petitioned for inter partes review (“IPR”) of a patent on geared-fan airplane engines owned by United Technologies Corporation (“UTC”).  The Board rejected GE’s arguments and found the claims not obvious in view of the prior art.  GE appealed.

At the Federal Circuit, UTC moved to dismiss GE’s appeal because GE lacked Article III standing.  The Federal Circuit ordered UTC to brief the issue in its responsive appellate brief.  The Federal Circuit allowed both sides to submit new evidence regarding GE’s alleged injury-in-fact caused by the challenged patent.

The Federal Circuit held GE lacked standing because it failed to establish injury-in-fact.  GE argued that it was injured because the patent caused GE (1) competitive harm, (2) economic loss, and (3) the Board’s decision would estop GE from challenging the patent in the future.  In support of its competitive harm and economic loss arguments, GE submitted an employee declaration that the patent prevented GE from using its 1970’s engine technology as a model for developing new engines.  GE also submitted evidence that Boeing had once asked GE to bid on a contract, causing GE to conduct research that “would potentially implicate” UTC’s patent.  The Federal Circuit held this evidence was insufficient to establish injury-in-fact because GE did not assert that it practiced the patent, that it had actually refrained from developing technology because of the patent, or lost bids because of the patent.  The competitor standing doctrine did not separately establish standing because the Board’s decision did not alter the status quo in the commercial airplane industry.  The Federal Circuit rejected GE’s estoppel argument because it previously held that estoppel is not an injury-in-fact.

Editor: Paul Stewart