Docket No. 2017-1828 (IPR2016-00046)
PROST, DYK, O’MALLEY
August 3, 2018
Brief summary: FC panel concluded that JTEKT “failed to establish an actual injury sufficient to control Article III standing” (injury must be ‘concrete and particularized’” and not “conjectural or hypothetical”; JTEKT’s “declarations do not establish that its planned activities create a substantial risk of infringing”).
Summary: JTEKT appealed PTAB IPR decision that claims 2 and 3 of GKN’s US 8,215,440 relating to drivetrain’s for four-wheel drive vehicles are not unpatentable for obviousness. GKN’s prior motion to the FC panel to dismiss alleging JTEKT lacked standing was denied as it “deemed it the better course for the parties to address the standing issue in their briefs.” The FC panel explained that “[u]nder the IPR statutes, any person or entity may petition” for IPR under § 311(a) and “[t]here is no requirement that the petioner have Article III standing” (“[p]arties that initiate [IPRs] need not have a concrete stake in the outcome; indeed, they may lack constitutional standing” (Cuozzo, US 2016; Consumer Watchdog, FC 2014). The FC panel also explained that “an unsuccessful petition may appeal an adverse [IPR] final written decision” under § 141(c) but “that the statute cannot be read to dispense with the Article III injury-in-fact requirement for appeal to” the FC (Phigenix, FC 2017 (that “the [patent at issue] increases competition…was not enough to establish Article III standing”); Consumer Watchdog, FC 2014 (no standing where CW “did not ‘allege any involvement in research or commercial activities involving human embryonic stem cells” or “that it [was] an actual or prospective competitor of [the patent owner] or licensee”, not engaged or likely to be engaged “in an[ activity that would give rise to a possible infringement suit”)). The “injury”, the FC panel explained, must be “both ‘concrete and particularized’” (Spokeo, US 2016), and not “conjectural or hypothetical” (Lujan, US 1992; Medimmune, US 2007 (does not need to “bet the farm, or…risk…damages”)). And the burden to show that damage in on “the party seeking judicial review” (here, JTEKT) (DaimlerChrysler, US 2006). “JTEKT’s problem” here, the FC panel explained, “is that [its] declarations do not establish that its planned activities create a substantial risk of infringing” the disputed claims “or likely lead to charges of infringement” (PPG Indust., FC 2017 (non-precedential)) (“while JTEKT and GKN are competitors generally, JTEKT expressly conceded that ‘no product is yet finalized’”). The FC panel also rejected JTEKT’s argument that “the creation of estoppel based on its participation in the IPR constitutes a separate, and independent, injury in fact” since JTEKT “is not engaged in any activity that would give rise to a possible infringement suit” (Phigenix). Thus, the FC panel concluded that JTEKT “failed to establish an actual injury sufficient to control Article III standing”.