PATENT CASE OF THE WEEK 

JTEKT Corporation v. GKN Automotive Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018)

The Federal Circuit dismissed an appeal from an inter partes review, holding that, although JTEKT Corporation had the right to file an inter partes review, it lacked standing to appeal its loss during the IPR proceeding.

JTEKT initially petitioned for IPR of the patentability of one of GKN’s patents.  Of the seven claims challenged, patent owner GKN disclaimed three claims; two were held to be obvious over the prior art; and two were not shown as obvious over the prior art.  JTEKT appealed the finding that the two claims were held not obvious.

Under the IPR statute, any person or entity may institute an IPR proceeding—petitioners need not have Article III standing.  Though the IPR statute provides that an unsuccessful petitioner may appeal an adverse final written decision, the Federal Circuit has held that “the statute cannot be read to dispense the Article III injury-in-fact requirement for appeal to this Court,” and the injury must be concrete and particularized.

To establish the requisite injury in an IPR appeal, the appellant must demonstrate that “it is engaged or will likely engage ‘in an activity that would give rise to a possible infringement suit.’”  If the PTAB record does not establish standing, the appellant has the burden of establishing standing by supplementing the record with affidavits or other evidence.

Here, that JTEKT has no product on the market does not preclude standing.  But “where the party relies on potential infringement liability as a basis for injury in fact, . . . it must establish 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.” Ultimately, the Federal Circuit found that JTEKT lacked standing because its evidence was insufficient to establish that its products in development were at risk for infringement or likely to lead to charges of infringement.

Opinion can be found here.

ALSO THIS WEEK

SAP America, Inc. v. InvestPic, LLC, Appeal No. 2017-2081 (Fed. Cir. Aug. 2, 2018)

The Federal Circuit modified the original May 15, 2018 opinion following a petition for rehearing filed by InvestPic, LLC.  A summary of the May 15, 2018 opinion can be found here.  As with the original opinion, the Federal Circuit affirmed the judgment of invalidity based on subject matter ineligibility.  The difference between the original and the reissued opinion is that the Federal Circuit considered the claims as they emerged from reexamination in the reissued opinion and found that the reexamination changes did not add anything to the non-abstract elements of the claims.

Opinion can be found here.

Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., Ltd., Appeal No. 2017-1314 (Fed. Cir. Aug. 1, 2018)

In an appeal from a district court’s grant of judgment on the pleadings, the Federal Circuit reversed. The Court addressed the question of whether prosecution history estoppel barred enforcement of a design patent for a portable animal kennel. Design patents cover only the invention as disclosed as an entirety. Therefore, when Advantek submitted two distinct designs during prosecution, the Examiner required a restriction—to which Advantek elected to prosecute the broader structure. The district court held that these patent office proceedings restricted the scope of the claims, and that defendant’s product falls outside of those claims.  The Federal Circuit held that the accused product falls outside of the purported surrender, and prosecution history estoppel does not preclude enforcement.

Opinion can be found here.

Biodelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., Appeal Nos. 2017-1265, -1266, -1268 (Fed. Cir. July 31, 2018)

In an appeal from three inter partes reviews on the same patent, the Federal Circuit reviewed the Petitioner’s request for remand in accordance with the Supreme Court’s recent decision in SAS Institute, Inc. v. Iancu.  In the underlying IPRs, the PTAB instituted review on only some of the claims and asserted grounds.  The Board found all instituted claims patentable on all instituted grounds.  Both the Patent Owner and the PTO Director argued that the Petitioner waived its right to seek SAS-based relief and its request for remand was untimely.  The Court rejected these arguments, holding that the PTAB decisions were inadequate in light of SAS, and remanded.

Opinion can be found here.