Federal Circuit Appeal Dismissed Where Party Appealing PTAB Decision Lacked Article III Standing
Before Newman, O’Malley, and Taranto. Appeal from the Patent and Trial Appeal Board.
Summary: Appellants from an IPR decision to the Federal Circuit must have concrete claims of current or non-speculative interest in practicing the claims under the patent at issue in order to have standing to appeal.
AVX requested an inter partes review of a patent owned by Presidio. The patent at issue described and claimed single-layer ceramic capacitors with certain features. AVX manufactures and sells a variety of electronic components, including capacitors. AVX argued that all 21 of the claims under Presidio’s patent were unpatentable based on obviousness. The PTAB held that five of the claims were unpatentable but the remaining 16 claims were upheld. AVX appealed the PTAB’s decision as to the upheld claims and Presidio responded by arguing that AVX lacked the standing required to appeal the Board’s decision in an Article III court.
The Federal Circuit concluded that AVX lacks standing and dismissed the case without evaluating the merits of the Board’s ruling. For a party to have standing in an Article III court it must show 1) injury in fact, 2) a causal connection between the injury and the conduct complained of, and 3) a likelihood that the injury will be redressed by a finding in their favor. The Federal Circuit rejected AVX’s assertion that it was injured because the statutory estoppel provision, 35 U.S.C. § 315(e), would prevent it from asserting the same challenge if Presidio asserts the patent claims against AVX in the future. The Federal Circuit also rejected AVX’s argument that AVX was injured because the Board’s decision reduces AVX’s ability to compete with Presidio. The Federal Circuit found that AVX lacked any current or non-speculative interest in practicing the upheld claims as they had not established any concrete plans to develop a capacitor that might implicate those claims. Thus, the Federal Circuit found that AVX failed to establish an injury in fact and dismissed AVX’s appeal.
Editor: Paul Stewart