Federal Circuit confirms ‘injury-in-fact’ requirement
The US Court of Appeals for the Federal Circuit has confirmed that a party must have an ‘injury-in-fact’ for it to bring an appeal against a decision of an inter partes review (IPR).
Circuit Judge Timothy Dyk delivered the court’s precedential ruling on Friday, August 3.
Vehicle engineering company GKN Automotive owns US patent number 8,215,440, covering a vehicle drivetrain, a system that connects a vehicle’s transmission to its wheels.
Japanese company Jtekt, also in the automotive industry, petitioned for an IPR of the ‘440 patent’s first seven claims.
The Patent Trial and Appeal Board (PTAB) agreed to review all the challenged claims but, following the IPR’s institution, GKN discounted claims 1, 4, and 5 of the patent.
In its review, the board held that claims 6 and 7 would have been obvious over prior art. However, the PTAB found that Jtekt had failed to show the obviousness of claims 2 and 3.
The Japanese company appealed against the decision in relation to claims 2 and 3. In response, GKN claimed that Jtekt lacked the standing to bring its appeal.
Last week, the Federal Circuit agreed with GKN.
Dyk confirmed that any person or entity can petition the PTAB to institute an IPR, and if a petitioner is unsuccessful in the petition, then it may appeal against the board’s written decision to the Federal Circuit.
However, in order to do that, there is an “injury-in-fact requirement”, he said. This means that the appellant must face an actual injury, Dyk explained.
The Federal Circuit has previously held that a party who claims that they will suffer from economic competition because the patent in question increases competition does not have the standing to bring an appeal ( Phigenix v Immunogen, 2017).
Also, the US Supreme Court has established that an injury-in-fact must be “an injury that is both concrete and particularised” ( Spokeo v Robins, 2015), and any conjectural or hypothetical injuries will not suffice.
Dyk explained that Jtekt must show that it has “concrete plans for future activity that creates a substantial risk of future infringement or likely cause the patentee to assert a claim of infringement”.
This showing would allow Jtekt to appeal against the IPR decision.
Jtekt had relied on potential infringement liability as a basis for injury-in-fact, but it failed to show that its planned product would create a substantial risk of infringing claims 2 or 3 of the ‘440 patent, the Federal Circuit said.
Dyk dismissed Jtekt’s appeal and made no order on costs.
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