United States: Let the petitioner beware: Clearing a path by proactively challenging patents in an IPR may result in a lack of standing to appeal an adverse decision

A recent decision by the United States Federal Circuit ( AVX Corporation v Presidio Components, Inc (Fed Cir, No 2018-1106, 13 May 2019)) has clarified the requirements for standing to appeal from an inter partes review ("IPR") before the Patent Trial and Appeal Board ("the Board"), but has left open the issue of estoppel.

AVX Corporation ("AVX") lodged an IPR against all the claims of US 6,661,639 (the '639 Patent) relating to ceramic capacitors. The Patentee of the '639 Patent, Presidio Components, Inc ("Presidio"), was a competitor of AVX. An IPR is a trial proceeding conducted before the Board to review the patentability of one or more claims of a patent on the basis of lack of novelty or obviousness (i.e. a ground raised under §§ 102 or 103) based on patents or printed publications.

The Board ultimately upheld several claims of the '639 Patent, which led to AVX appealing the decision to the Court of Appeals for the Federal Circuit. The first question that had to be addressed by the Federal Circuit was whether AVX had standing to appeal the IPR decision.

The judicial power of Federal Courts in the United States is derived from Article III of the United States Constitution. Article III grants the Federal Courts judicial power over cases or controversies. Accordingly, a party appealing to the US Federal Circuit from an IPR must demonstrate it has standing to appeal, namely it must demonstrate '(1) an "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 favourable decision.'" (citation omitted).

AVX argued two theories for establishing standing: (1) AVX is injured by The Board's rejection of its challenge to the upheld claims as it is estopped from raising these invalidity challenges in a later non-Patent Office action or (2) AVX is injured because it reduces AVX's ability to compete with Presidio.

AVX's injury by estoppel theory was based on the estoppel provision of 35 USC § 315(e)(2), which states in part:

The petitioner in an inter partes review of a claim in a patent ... may not assert in either a civil action ... that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

AVX argued that operation of §315(e)(2) effectively barred it from ever asserting in a district court, i.e. in a declaratory judgement action or as a counterclaim to an infringement action, that the upheld claims were invalid. This argument was rejected by the Federal Circuit. First, the Federal Circuit explained that estoppel itself does not create standing when a party is not already engaging in allegedly infringing activity. Second, the Federal Circuit clarified that as yet no such decision as to the application of this section and the ramifications of estoppel had been issued. The Federal Circuit also highlighted case law holding '"[i]t is axiomatic that a judgment is without preclusive effect against a party which lacks a right to appeal that judgment"'. Consequently, although the Federal Circuit declined to find standing on this issue, it left open the possibility that estoppel would not apply. Therefore, in a subsequent action before a district court, AVX can "test whether § 315(e) bars it from raising the ... challenges that the Board reviewed and rejected".

AVX's second theory for standing was based on injury as a competitor of Presidio under a so called "competitor standing" theory where the actions of the government are implicated. The Federal Circuit explained that "competitor standing" had been recognized in many non-patent related circumstances where the actions of the government, e.g. cancellation of a tax benefit, actions of the Federal Communication Commission, resulted in "a nonspeculative threat to a concrete interest of the challenger". In contrast to such cases, the government action here was the Board upholding claims "which do not address prices or introduce new competitors". Accordingly, the mere existence of patent claims does not constitute a harm for a competitor of the patentee. However, the Federal Circuit opined that harm could be established where the challenger was "using the claimed features or nonspeculatively planning to do so". Despite evidence of Presidio's past infringement suits against AVX and AVX's suspicions that Presidio would assert the upheld claims, The Federal Circuit found that AVX did not establish any current use or nonspeculative plans related to the upheld claims and, therefore, did not establish standing.

Since no theory for Article III standing was found persuasive, the Federal Circuit dismissed the appeal from the IPR decision upholding claims of the '639 Patent.

Take-home lesson: Petitioners clearing a path by proactively challenging patents in an IPR prior to engaging in or planning (potentially) infringing activity risk lacking standing to appeal adverse IPR decisions to the Federal Circuit. However, despite the estoppel provisions of §315(e)(2), such Petitioners may not be subject to estoppel with regard to the arguments raised during the IPR. However, the Federal Circuit was not definitive in this regard, noting that the issue of estoppel would need to be tested in a subsequent litigation.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions