July 12, 2019
PTAB Litigator Doug Robinson Discusses Patent Appeals Standing with Law360
St. Louis patent litigator Doug Robinson was interviewed by Law360 about the Federal Circuit’s decision to deny General Electric standing to appeal a PTAB ruling which upheld United Technologies’ patent on jet engine technology.
GE preemptively challenged the patent in question and had not been accused of infringement in any concurrent proceeding. The company argued that the patent put them at a disadvantage, claiming that it limited the types of engines it could develop and deliver to customers; it would cost them more to develop a design around strategy; and that it left them open to possible litigation if United Technologies moved to sue them for possible infringement.
GE would have had the proper standing to appeal the decision if it had been accused of infringement. Because they preemptively sued United Technologies, though, and because they had no evidence that their purported injures were more than hypothetical speculation (they could not prove they had lost a customer, for example), the Federal Circuit was compelled to deny them standing.
For GE, the denial from the Federal Circuit will likely mean that the PTAB’s ruling is the final word on the matter. Their case will serve as an important example of a potential drawback that other businesses will need to factor into their IPR strategies. As Robinson puts it, “Is that a compelling reason to not file an IPR? Maybe, maybe not. But it is certainly something that you have to consider.”
For businesses that choose to file, one valuable lesson to be gained from GE’s failed attempt is to include more factual evidence in appeal arguments. Instead of broadly stating that design around work will cost a company more money, for example, present evidence that proves it.
There may also be a light at the end of the tunnel for GE and businesses in a similar situation. In his concurring opinion, Circuit Judge Todd Hughes cited a similar case — AVX v. Presidio — and described the standard for determining standing in an IPR as “overly rigid and narrow.” Some may look at the wording here as a nudge for AVX to take its appeal to the Supreme Court.