{"id":2160,"date":"2018-08-03T15:02:52","date_gmt":"2018-08-03T19:02:52","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2160"},"modified":"2018-08-03T15:03:15","modified_gmt":"2018-08-03T19:03:15","slug":"undue-process-you-can-ask-the-pto-to-review-a-patent-but-if-they-blow-it-you-may-be-powerless-to-appeal","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2160","title":{"rendered":"Undue Process: You Can Ask the PTO to Review a Patent, but if They Blow it, You may be Powerless to Appeal"},"content":{"rendered":"

In JTEKT Corp. v.\u00a0GKN Automotive Ltd.<\/a>, [2017-1828](August 3, 2018), the Federal Circuit the Federal Circuit dismissed the appeal of a PTAB determination that claims 2 and 3 of U.S. Patent No. were\u00a0not unpatentable, because Appellee, JTEKT, lacked standing to appeal.<\/p>\n

JTEKT filed a petition alleging that claims 1\u20137 of the \u2019440 patent were invalid. After the Board instituted as to all\u00a0challenged claims, GKN disclaimed claims 1, 4, and 5, so the IPR focused on the patentability of claims 2 and 3.<\/p>\n

Under the IPR statute, any person or entity may petition\u00a0the Patent Office to institute an IPR proceeding. 35\u00a0U.S.C. \u00a7 311(a). There is no requirement that the petitioner\u00a0have Article III standing, as \u201c[p]arties that initiate\u00a0[IPRs] need not have a concrete stake in the outcome;\u00a0indeed, they may lack constitutional standing.\u201d Cuozzo\u00a0Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143\u201344 (2016).\u00a0\u00a0The statute also provides that an\u00a0unsuccessful petitioner may appeal an adverse final\u00a0written decision. 35 U.S.C. \u00a7 141(c).\u00a0 However the Federal Circuit has held that the statute does not do away with the Article III standing requirement.\u00a0\u00a0Phigenix<\/em>,\u00a0Consumer Watchdog<\/em>,\u00a0stressed that the \u201cobligation to
\nestablish an injury in fact\u201d for appellants \u201cremains firm.\u201d\u00a0 In order to demonstrate the requisite injury in\u00a0an IPR appeal, the appellant\/petitioner must show that it\u00a0is engaged or will likely engage \u201cin an[] activity that\u00a0would give rise to a possible infringement suit.\u201d<\/p>\n

The fact that JTEKT had no product on the market at\u00a0the present time does not preclude Article III standing,\u00a0either in IPRs or in declaratory judgment actions.\u00a0\u00a0But where the party relies on potential\u00a0infringement liability as a basis for injury in fact, but is
\nnot currently engaging in infringing activity, it must\u00a0establish that it has concrete plans for future activity that\u00a0creates a substantial risk of future infringement or likely\u00a0cause the patentee to assert a claim of infringement.\u00a0\u00a0While JTEKT has submitted two declarations in support\u00a0of its standing, these declarations\u00a0do not establish that its planned product would\u00a0create a substantial risk of infringing the claims on appeal.<\/p>\n

Because JTEKT has failed to establish an actual injury\u00a0sufficient to confer Article III standing, we dismiss this\u00a0appeal.\u00a0 Assuming the correctness of the Federal Circuit reasoning, this is another demonstration of how ill-conceived the AIA was.\u00a0 A party can challenge a patent in an IPR or PGR, but no matter how badly the USPTO handles the IPR, that party may not be able to appeal.\u00a0 Where is the justice in such a scheme?\u00a0 Should there be estoppel with respect to a decision that cannot be reviewed?\u00a0 That sounds even more unjust.<\/p>\n","protected":false},"excerpt":{"rendered":"

In JTEKT Corp. v.\u00a0GKN Automotive Ltd., [2017-1828](August 3, 2018), the Federal Circuit the Federal Circuit dismissed the appeal of a PTAB determination that claims 2 and 3 of U.S. Patent No. were\u00a0not unpatentable, because Appellee, JTEKT, lacked standing to appeal. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[21],"tags":[],"class_list":["post-2160","post","type-post","status-publish","format-standard","hentry","category-ipr"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2160","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2160"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2160\/revisions"}],"predecessor-version":[{"id":2162,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2160\/revisions\/2162"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2160"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2160"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2160"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}