Number 5: RPX Corp. v. Chanbond LLC, No. 17-1686
Abbreviated Question Presented: Who has standing to appeal the Patent Trial and Appeal Board’s (PTAB) final written decisions?
Related Petition: JTEKT Corp. v. GKN Automotive Ltd., No. 18-750
In the proceedings below, RPX filed a Federal Circuit appeal of the PTAB’s final written decision in the inter partes review (IPR) that it requested. The Federal Circuit denied RPX’s appeal for lack of standing because RPX had not been accused of infringing Chanbond’s patent and was “not engaged in any activity that would give rise to a possible infringement suit.” In its petition to the Supreme Court, RPX argued that the Federal Circuit’s finding, that the only injury sufficient to confer standing on an IPR petitioner is a patent-inflicted injury, conflicts with the America Invents Act and Supreme Court precedent regarding the power of Congress to enable a party to satisfy Article III standing by statute.
Although the Supreme Court hasn’t granted certiorari of RPX’s petition yet, it has signaled interest in this petition by asking the Solicitor General to brief the government’s position on this issue. On May 9, 2019, the Solicitor General filed its brief urging the Court to deny RPX’s petition. It argued that the right to initiate an appeal from the PTAB’s final written decision in an IPR is conferred not on “any party to the inter partes review,” but on “a party dissatisfied with the final written decision of the Board” (see 35 U.S.C. § 319) and that to prevent that prerequisite from being superfluous, the term “dissatisfied with” should be construed to mean “aggrieved by” or “injured by.” Thus, the government maintains that a petitioner can only invoke the jurisdiction of the Federal Circuit in an appeal from a final written decision if the petitioner can show that it will suffer concrete injury from the existence of the challenged patent.
Number 4: Iancu v. NantKwest, Inc., No. 18-801
Abbreviated Question Presented: Does an unsuccessful patent applicant have to pay the United States Patent and Trademark Office’s (PTO) attorneys’ fees if it challenges the rejection of its patent application in court?
Related Petition: Booking.com B.V. v. United States Patent, No. 18-1309
According to 35 U.S.C. §145, an unsuccessful patent applicant must pay “all expenses of the proceedings” when seeking district court judicial review of the PTO’s rejection of a patent application. But what constitutes “expenses” under Section 145? The Solicitor General, on behalf of the PTO Director, petitioned for writ of certiorari for review of this very question.
This case arises from the District Court’s denial of reimbursement of the PTO’s attorneys’ fees associated with defending the agency’s rejection of NantKwest’s patent application. A divided Federal Circuit panel reversed the District Court’s decision and granted attorneys’ fees to the PTO. Acting sua sponte, the en banc Federal Circuit vacated the panel opinion, reheard the case, and decided in a 7-4 decision that the term “expenses” in Section 145 does not include the PTO’s...
