Lack of Injury In Fact Scuttles Appeal

by | Sep 25, 2024 | Federal Circuit Appeal, PTAB News, Standing

By Lexi Heon, Lisamarie LoGiudice, and Matt Johnson –

The Federal Circuit dismissed Platinum Optics Technology Inc.’s (PTOT) appeal from an IPR decision, finding the challenged claims of Viavi’s U.S. Patent No. 9,354,369 not unpatentable, because PTOT failed to establish an injury in fact sufficient to confer standing on appeal.

Prior to PTOT’s failed IPR petition, Viavi sued PTOT for infringement of the ’369 patent in two civil actions.  Both suits were dismissed with prejudice prior to the Board’s ruling.  PTOT appealed the Board’s final written decision, asserting it has standing to appeal based on potential infringement liability stemming from: (1) supplying the accused bandpass filters overseas, and (2) developing new models of bandpass filters.

The Court’s jurisdiction to review the Board’s final decisions is limited to “Cases” and “Controversies” under Article III of the U.S. Constitution, which requires the appellant meet the standing requirement.  To establish standing, the appellant must prove, inter alia, that it suffered an injury in fact.  Where a party relies on potential infringement liability as a basis for standing, the party “must establish that it has concrete plans for future activity that creates a substantial risk of future infringement or [will] likely cause the patentee to assert a claim of infringement.” PTOT relied on a warning letter sent by Viavi before suit was filed, stating PTOT likely could not fulfill its supply agreements without infringing.  The Court found the letter insufficient, stating that “mere speculation about a possibility of suit, without more, is insufficient to confer standing.”  PTOT also argued it has suffered an injury in fact based on its development of new bandpass filters and submitted a fact witness declaration in support of that contention.  The Court found, however, that the “vague and conclusory statements [in the declaration] are insufficient to establish that PTOT has concrete plans” for the development of the new filters.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.