Knobbe/Martens: Intellectual Property Law

Phigenix Counterpoint: Federal Circuit Finds Standing For Non-Practicing IPR Petitioner/Appellant

By Kerry S. Taylor, Ph.D. and Jeffrey C. Wu, Ph.D. February 16, 2017

In a non-precedential decision, the Federal Circuit found that appellant PPG had Article III standing to file an appeal from two inter partes reexaminations.  However, the Court found that appellee Valspar’s subsequent “Covenant Not to Sue” had mooted the appeal. 

As part of its preparation for launching a commercial can-interior coating for the beverage can industry, PPG filed two inter partes reexaminations challenging two of Valspar’s patents.  Valspar prevailed in both proceedings, and PPG appealed the decisions to the Federal Circuit.  During briefing before the Federal Circuit, Valspar unilaterally provided PPG with a Covenant Not to Sue for infringement with respect to the two patents.

The Federal Circuit’s decision first reviewed PPG’s Article III standing to appeal.  The Court found PPG had standing because PPG (1) had launched a commercial can-interior coating product by the time of the appeal and (2) had received at least one inquiry from a customer suggesting that Valspar intended to pursue infringement litigation against PPG related to its can-interior coating.  The Court found that “[a]t a minimum, this evidence establishes that PPG had a legitimate concern that its manufacture and sale of its can-interior coating would draw an infringement action by Valspar. PPG’s concern proved warranted when Valspar subsequently filed an infringement action on related patents.” 

Although the Court held PPG had standing, the Court found that Valspar’s subsequent Covenant Not to Sue mooted the appellate proceedings.  The Court thus vacated the PTAB’s reexamination decisions and dismissed the appeal.

While this decision is non-precedential, it serves as a counterpoint to the Federal Circuit’s recent decision in Phigenix, Inc., v. Immunogen, Inc., No. 2016-1544 (Fed. Cir. Jan. 2017) finding an IPR petitioner/appellant lacked Article III standing on appeal.  Accordingly, this decision provides an example for future appellants of facts that demonstrate a case or controversy sufficient to establish Article III standing on appeal.

Meet the Knobbe Martens Attorneys

Kerry S. Taylor has been practicing since 1998 in areas including Inter Partes Reviews, patent litigation, patent prosecution, strategic planning and counseling relating to...
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