GE’s “purported competitive injuries” found not to provide standing to appeal IPR

General Electric Company (GE) v. United Technologies Corporation (UTC)

Docket No. 2017-2497 (IPR2016-00531)
July 10, 2019

Brief Summary: GE appealed Board IPR finding claims 7-11 of UTC’s US 8,511,605 relating to gear fan gas turbine engines not invalid for obviousness (UTC disclaimed claims 1 and 2 which were challenged for anticipation). On Dec. 29, 2017, UTC argued that GE lacked standing to appeal the Board decision “because it failed to demonstrate a sufficient injury in fact”. GE argued in the “First Long Declaration” “that the ‘605 patent impedes its ability to use its 1970s geared-fan engine design…and its ability to compete in a highly regulated industry.” The FC denied UTC’s motion with addressing the merits and ordered that the issue be briefed by the parties. UTC argued GE has not suffered any “injury in fact because it had not threatened GE with litigation, GE did not show “a concrete and particularized economic injury because it has not developed an engine that implicates” the challenged claims, and “statutory estoppel and the competitive standing doctrine do not apply to GE.” The parties then submitted additional declarations, in which the FC panel explained GE contended “only that to maintain GE’s competitive position, it needs to be able to meet customer needs with a geared-fan engine design that may implicate the ‘605 patent.” The FC panel explained that “[t]o establish standing” to appeal an IPR decision, “an appellant must” show that is has “suffered an injury in fact that has a nexus to the challenged conduct” (Phigenix, FC 2017 (“real or imminent” injury); Cuozzo, US 2016; JTEKT, FC 2018 (“injury in fact must be ‘concrete and particularized,’ not merely ‘conjectural or hypothetical’”); DaimlerChrysler, US 2006). The FC panel rejected GE’s arguments as being “purported competitive injuries…too speculative to support constitutional standing” (e.g., declarations did “not assert that GE lost bids”, did not submit “a direct-drive engine design to Boeing because of the ‘605 patent”, did not shown “lost business or lost opportunities”, or “that GE is in the process of designing an engine” covered by the claims or “definite plans to use the claimed features”, and only asserted “speculative harm untethered to the ‘605 patent”; AVX (FC 2019 (no Article III standing where “no present or nonspeculative interest in engaging in conduct even arguably covered by the patent claims…competitor standing has been found when government action alters competitive conditions.”)). “Here,” the FC panel wrote, “the Board’s upholding of” UTC’s claims “did not change the competitive landscape for commercial airplane engines” and the competitor standing doctrine does not therefor apply. And GE’s argument “that estoppel under section 315(e) creates injury in fact” was also rejected (as in AVX, Phigenix, and Watchdog (FC 2014)). GE’s appeal was therefore dismissed. Judge Hughes concurred but wrote “that precedent has developed an overly rigid and narrow standard for Article III standing” and AVX was incorrectly decided.

This entry was posted in Appeal, Inter Parties Review (IPR), IPR. Bookmark the permalink.

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