Standing to Appeal in IPR Remains Even After Divesting Accused Products

| Jeremiah S. Helm, Ph.D.Mark Kachner


Before Prost, Newman, Wallach. On appeal from The Patent Trial and Appeal Board.

Summary: IPR petitioner has standing to appeal an adverse Board decision even after divesting the products previously accused of infringement.

Oren Technologies sued Grit Energy for patent infringement. During the pendency of the litigation, Grit transferred ownership of all accused products, and Oren and Grit stipulated to dismiss the infringement action without prejudice. Soon thereafter Grit petitioned for IPR. The Board ultimately found that Grit did not meet its burden to show the challenged claims were unpatentable. On appeal, Oren challenged Grit’s standing to appeal. The Federal Circuit held that Grit had standing. Because Oren previously sued Grit for patent infringement, and Oren is free to reassert those infringement claims (because dismissal was without prejudice), Grit faces a sufficient threat of litigation to maintain standing to appeal. Further, Grit’s divestment of the accused products did not absolve it of liability based on actions that occurred prior to the transfer.

Editor: Paul Stewart