In AVX Corp. v. Presidio Components, Inc., No. 2018-1106 (Fed. Cir. May. 13, 2019), the Federal Circuit determined that a manufacturer did not have standing to appeal an adverse decision in an IPR challenging a competitor’s patent, because the petitioner did not have a present or nonspeculative interest in engaging in conduct arguably covered by the patent. The decision leaves open the question of whether a petitioner that lacks standing to appeal would be bound by petitioner estoppel under 35 U.S.C. § 315(e).
As we have discussed, standing under Article III of the Constitution is not required to file an IPR petition, however a losing IPR petitioner appealing a final decision to the Federal Circuit must have Article III standing. For a party to have standing, it must show (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 favorable decision.” Lujan v. Defenders of Wildlife, 504 U.S. 555, 559–61 (1992).
AVX and Presidio are competitors in manufacturing and selling ceramic capacitors, which are used in electronic devices. The parties have been involved in several patent infringement actions relating to capacitor patents owned by either party, and in one such action AVX was required to pay over $3 million in damages and was enjoined from selling an infringing capacitor.
AVX filed an IPR petition to challenge a particular Presidio patent, although AVX was not manufacturing or planning to manufacture a capacitor covered by the patent. The PTAB’s final decision canceled some but not all of the challenged claims, and AVX appealed the decision upholding some of the claims. Presidio challenged AVX’s standing to appeal, and AVX argued that it had standing because of petitioner estoppel under 35 U.S.C. § 315(e) and based on “competitor standing.” The Federal Circuit rejected both arguments and dismissed the appeal for lack of standing.
On the estoppel issue, AVX argued that it had standing because it would be estopped from asserting the same invalidity arguments in any future PTO proceedings or litigation involving the same patent, under 35 U.S.C. § 315(e). The court rejected this argument for two reasons. First, the court had already determined that estoppel under § 315(e) is not a sufficient basis for standing. See Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2018) (discussed here). Second, the court noted that it has not yet decided whether estoppel would even apply in such a case, in which “the IPR petitioner lacked Article III standing to appeal the Board’s decision to this court.” The court declined to address that issue in this case because AVX assumed that estoppel would apply, and the parties did not dispute or brief the issue.
On the “competitor standing” issue, the court determined that the status of the parties as competitors was not sufficient to establish standing, because AVX had not shown that it was engaging in, or has nonspeculative plans to engage in conduct arguably covered by the claims upheld in the IPR. Under these circumstances, AVX could not establish a harmful competitive effect as a result of the PTAB’s final decision.
The court’s decision is a reminder that establishing standing to appeal of an IPR decision may not be possible for a petitioner that is not engaged in potentially infringing conduct. The decision is also interesting for its suggestion that under such circumstances the petitioner may not be bound by statutory estoppel, although it leaves resolution of that issue to a future case.