Standing Still? Only if Injury-In-Fact Is Tied to the Claims at Issue

IRONSOURCE LTD. v. DIGITAL TURBINE, INC.

Before Moore, Lourie, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: An appellant seeking to establish Article III standing based on an injury-in-fact flowing from the appellee’s challenged patent must link its own product to the claims at issue.

ironSource Ltd. (“ironSource”) petitioned the Patent Trial and Appeal Board (the “Board”) for post-grant review (PGR) of certain claims of a patent owned by Digital Turbine, Inc. (“DT”). After the Board instituted PGR (and had denied DT’s initial motion to amend), DT filed a revised motion to amend. The substitute claims introduced, inter alia, two limitations that were not present in the original claims. In its final written decision, the Board granted that motion. ironSource appealed.

On appeal, DT argued ironSource lacked Article III standing. The Federal Circuit agreed, finding the declaration on which ironSource relied insufficient to establish an injury in fact. While the declaration “establishe[d] that ironSource previously developed and released a product,” the Federal Circuit explained, “it fail[ed] to demonstrate concrete plans to reintroduce th[at] product with features that are implicated by the substitute claims at issue.” ironSource argued that DT had made veiled threats of infringement, but ironSource erred by focusing on the original patent claims, rather than the claims as narrowed in the PGR. At oral argument, ironSource argued for the first time that, under General Electric Co. v. Raytheon Techs. Corp., 983 F.3d 1334 (Fed. Cir. 2020), “oblique references” to the asserted claims can suffice to show an injury in fact. The Federal Circuit found General Electric inapposite because the declaration in that case had “still linked the appellant’s potential product to the claim limitations” at issue. Thus, the Federal Circuit dismissed the appeal for lack of jurisdiction.

Editor: Sean Murray