Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 95 PTCJ 113, 11/24/2017. Copy-
right 姝2017 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com
Patents/Post-Grant Opposition
Can an Industry Group Appeal an Unfavorable IPR Decision?
BYDONALD R. STEINBERG AND VERA A. SHMIDT
Patent owners, both those practicing their invention
and non-practicing entities (NPEs), often approach
companies they believe are infringing their patent
rights. The patent owners threaten lawsuits if the com-
panies do not stop selling certain products or demand a
license with a threat of a lawsuit if no agreement is
reached. If the companies are unable to reach an agree-
ment with the patent owner, they often turn to invalida-
tion proceedings, such as inter partes reviews (IPRs),
covered business method (CBM) proceedings, or post-
grant reviews (PGRs).
In some situations, an entity that has not been threat-
ened directly will file one of these post-grant proceed-
ings. That entity may or may not have a relationship
with the companies that were threatened, and may have
a less direct relationship with the patent owner. Any of
these entities should have standing to file IPRs and
PGRs in the Patent Trial and Appeal Board (PTAB) of
the Patent and Trademark Office. See Cuozzo Speed
Technologies, LLC v. Lee, 136 S. Ct. 2131, 2143-44
(2016) (‘‘Parties that initiate the proceeding need not
have a concrete stake in the outcome; indeed, they may
lack constitutional standing’’). To initiate a CBM pro-
ceeding, a party needs to have been sued or charged
with infringement of a covered business method patent.
America Invents Act, § 18(a)(1)(B).
However, to appeal an unfavorable final decision
from the PTAB to the U.S. Court of Appeals for the Fed-
eral Circuit, the entity needs Article III standing. Phige-
nix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171-72
(Fed. Cir. 2017) (‘‘ ‘[A]lthough Article III standing is not
necessarily a requirement to appear before an adminis-
trative agency,’ an appellant must nevertheless supply
the requisite proof of an injury in fact when it seeks re-
view of an agency’s final action in a federal court’’
(quoting Consumer Watchdog v. Wisconsin Alumni Re-
search Found., 753 F.3d 1258, 1261 (Fed. Cir. 2014); ci-
tations omitted)). ‘‘Article III limits the federal courts’
jurisdiction to those disputes seeking to ‘redress or pre-
vent actual or imminently threatened injury to persons
caused by private or official violation of law.’ ’’ Con-
sumer Watchdog, 753 F.3d at 1260 (quoting Summers v.
Earth Island Inst., 555 U.S. 488, 492-93 (2009)). Article
III standing may be unlikely in a situation in which the
entity has no meaningful relationship to the threatened
companies.
This article addresses considerations that arise if the
entity is an industry group whose members are among
those threatened by the patent owner. The courts have
not yet addressed whether such an industry group can
appeal an unfavorable final written decision from the
PTAB.
General Standing Requirements
The party seeking judicial review bears the burden of
establishing that it has standing under Article III. Phige-
nix, 845 F.3d at 1171. Courts apply a three-part test: an
appellant must have (1) suffered an injury in fact, (2)
that is fairly traceable to the challenged conduct of the
Don Steinberg is the Chair of the Intellectual
Property Department at WilmerHale. He
advises clients on intellectual property mat-
ters, obtaining patent and trademark protec-
tion, litigation, and post-grant proceedings
before the Patent Trial and Appeal Board.
Vera Shmidt is a senior associate at the firm.
She advises clients on intellectual property
and policy matters. She has experience with
patent drafting and prosecution, reexami-
nations, interferences, trademark, and trade
secret protection, and IP portfolio develop-
ment.
COPYRIGHT 姝2017 BYTHE BUREAU OF NATIONAL AFFAIRS, INC. ISSN 0148-7965
BNA’
s
Patent
,
Tra
d
emar
k
& Co
py
ri
gh
t Journa
l
®
