RPX petitioned for inter partes review of ChanBond’s ’822 patent. The Board instituted the IPR and determined that RPX did not show any challenged claim to be unpatentable. RPX appealed the final written decision to the Federal Circuit. ChanBond moved to dismiss the appeal on the ground that RPX lacked standing to appeal. The Court granted ChanBond’s motion and dismissed the appeal, finding that, because RPX could not show an “injury-in-fact,” RPX lacked Article III standing. RPX is seeking Supreme Court review.

Article III standing requires an actual “case or controversy.” To show a case or controversy, a party must demonstrate that it has suffered an injury-in-fact that is fairly traceable    to the challenged action, and that the injury is likely to be redressed by a favorable judicial decision. See Lujan v. Defs. of Wildlife, 504 U.S. 555, 560 (1992). To establish an injury-in-fact, a party must show that it  suffered  an  injury  that  is  both  “concrete  and particularized.” Id. And to constitute a concrete injury, the harm must “actual or imminent.” Id.

RPX’s “core business is in acquiring patent rights on the open market and in litigation to achieve peaceful resolution of patent disputes through rationally negotiated transactions.” Before the Federal Circuit, RPX argued that it has suffered at least three types of injury sufficient to establish Article III standing: (1) injury to its statutory rights; (2) injury to its standing relative to competitors; and (3) injury to its reputation of successfully challenging wrongfully issued patent claims. The Court addressed each claim of harm.

As to RPX’s first claim, the Federal Circuit relied on its decisions in Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014), and in Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017), to reject RPX’s claim of injury to  its statutory rights. The statute guarantees the right to seek cancellation of the patent, but it does not guarantee any outcome. And where the party seeking cancellation is  not engaged in any potentially infringing activity, the statutory estoppel provisions do not constitute an injury-in-fact. As to RPX’s second claim, the Federal Circuit dismissed RPX’s reliance on the doctrine of “competitor standing.” While RPX lists its competitors as Unified Patents and Askeladden L.L.C., the Court determined that there was insufficient evidence in the record to prove that the Board’s determination would increase or aid RPX’s competition in the market of non-defendant IPR petitioners. As to RPX’s final claim, the Federal Circuit dismissed RPX’s alleged reputational injury. RPX’s only evidence was a declaration from its senior VP of client relations. The Court found that the declarant was “unable to quantify the reputational and economic harm.” It was thus insufficient evidence that “a concrete and particularized harm will occur.”

RPX filed a petition for a writ of certiorari with the Supreme Court of the United States with the following question presented:

Can the Federal Circuit refuse to hear an appeal by a petitioner from an adverse final decision in a Patent Office inter partes review on the basis of lack of a patent-inflicted injury-in-fact when Congress has (i) statutorily created the right to have the Director of the Patent Office cancel patent claims when the petitioner has met its burden to show unpatentability of those claims, (ii) statutorily created the right for parties dissatisfied with a final decision of the Patent Office to appeal to the Federal Circuit, and (iii) statutorily created an estoppel prohibiting the petitioner from again challenging the patent claims?

The Supreme Court subsequently called for the views of the Solicitor General.

The Supreme Court has asked for the Solicitor General’s view on whether non-practicing entities like RPX can appeal adverse PTAB decisions, even where they lack a patent-inflicted injury-in-fact.

RELATED CASES

• Knowles Elecs. LLC v. Iancu, 886 F.3d 1369 (Fed. Cir. 2018) (PTO has standing as intervenor to defend its decision in IPRs).
• E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996 (Fed. Cir. 2018) (patent challenger has standing to appeal Board IPR decision).
• JTEKT Corp. v. GKN Auto. Ltd., 898 F.3d 1217 (Fed. Cir. 2018) (patent challenger lacked standing to appeal Board IPR decision).
• Altaire Pharm., Inc. v. Paragon Bioteck, Inc., 889 F.3d 1274 (Fed. Cir. 2018), vacated in part on other grounds, 738 F. App’x 1017 (Fed. Cir. 2018) (PGR petitioner has standing to appeal where petitioner intended to file an ANDA for the patented product as soon as possible).