Navigating Evolving Standing Requirements for Appeals from the PTAB

After holding that an inter parte reexamination requester must establish Article III standing to appeal to the Federal Circuit (Consumer Watchdog), the court held that the “hard floor” standing requirements similarly apply to appeals from IPR proceedings (Phigenixi). Since then, the court has further defined the appellate standing requirements and dismissed a series of appeals from PTAB proceedings for lack of standing, such as JTEKT (2018), RPX (2018), Momenta (2019), AVX (2019), and most recently, GE.  Seeking Supreme Court review, IPR petitioners in JTEKT and RPX filed petitions for certiorari after the Federal Circuit dismissed their appeals.  They sought to directly challenge the Federal Circuit’s standing jurisprudence; however, the Supreme Court denied both petitions last month. As a result, Federal Circuit decisions remain controlling on standing.

In this article, Finnegan attorneys Mike Flibbert and Michelle Rice provide an overview of the current state of the law on appellate standing from the PTAB and offer practical guidance for appellants and appellees in strategically establishing or challenging standing to appeal. Comparing dismissed appeals with cases in which standing was found to exist (such as PPG (2017), DuPont (2018), Google (2018), and Amerigen (2019)), this article addresses the evidentiary requirements for establishing an “injury-in-fact,” taking into account the role of the appellant as a current or future competitor, licensee, or non-practicing entity.  Other key considerations include supplementing the PTAB or appellate record with standing evidence, such as affidavits or declarations specifying ongoing or future potentially infringing commercial activities, the patentee’s refusal to grant a covenant not to sue, any other relevant economic or commercial injuries, and any past or ongoing litigation between the parties. Timing issues can also be important: First, an appellant should consider strategically planning the timing of its PTAB petition and related commercial activities, so that by the time of any future appeal (typically about 18 months after a PTAB petition), sufficient standing evidence can be presented to the Federal Circuit. Second, an appellant should be cognizant that standing is required to exist both at the time of filing of a notice of appeal to the Federal Circuit as well as at all times during an appeal. Only by successfully navigating these and other standing requirements can an appellant have an opportunity to present its substantive arguments on the merits to the court.

Read the full article.