923 F.3d 1357
Fed. Cir.2019Background
- Presidio owns U.S. Patent No. 6,661,639, claiming single‑layer ceramic capacitors with buried metallization connected to end blocks by metal‑filled vias.
- AVX petitioned for inter partes review (IPR) of all 21 claims; the Patent Trial and Appeal Board invalidated claims 13–16 and 18 but upheld claims 1–12, 17, and 19–21 (the "upheld claims").
- AVX appealed the Board’s adverse rulings on the upheld claims to the Federal Circuit; Presidio did not appeal the invalidated claims.
- AVX submitted a declaration asserting (1) history of litigation with Presidio, (2) competitive injury from the Board’s decision and (3) estoppel under 35 U.S.C. § 315(e) as grounds for Article III standing to appeal.
- The Federal Circuit required AVX to establish Article III standing to pursue the appeal and considered two theories: estoppel-based injury and competitor (commercial) injury from the upheld claims.
- The court concluded AVX lacked standing because (a) estoppel concerns did not provide a present, concrete Article III injury and (b) AVX failed to show present or nonspeculative plans to practice products that would be covered by the upheld claims.
Issues
| Issue | Plaintiff's Argument (AVX) | Defendant's Argument (Presidio) | Held |
|---|---|---|---|
| Whether AVX has Article III standing to appeal the Board’s decision | AVX: Board’s rejection injures AVX because § 315(e) estoppel will bar AVX from reasserting obviousness defenses later, and the upheld claims harm AVX’s competitive position | Presidio: AVX lacks a concrete, particularized, imminent injury—no current or non‑speculative activity would infringe the upheld claims; estoppel theory insufficient absent a concrete controversy | Held: No Article III standing; appeal dismissed. Estoppel and competitor theories both fail. |
| Whether § 315(e) estoppel by itself establishes injury-in-fact for standing | AVX: Estoppel will preclude future challenges, creating an injury | Presidio: § 315(e) alone does not create the concrete injury required by Article III; effect of estoppel when petitioner lacks standing on appeal is unresolved | Held: Estoppel theory rejected as a basis for standing here; court declined to decide broader § 315(e) question absent an adversarial record. |
| Whether competitive harm ("competitor standing") exists from upholding patent claims | AVX: Board’s decision strengthens Presidio’s exclusivity and thus reduces AVX’s ability to compete | Presidio: Patents are rights to exclude and do not, by their mere existence, cause nonspeculative competitive injury to rivals who are not practicing the claimed features | Held: No competitive injury; AVX did not show present or concrete plans to practice the claimed features, so competitor‑standing doctrine does not apply. |
| Whether AVX’s litigation history with Presidio makes injury imminent | AVX: Prior suits and a prior injunction/damages show substantial threat of future litigation | Presidio: Prior litigation alone does not create a present concrete risk tied to these specific claims | Held: Prior litigation insufficient; speculative threat of future suit does not satisfy Article III. |
Key Cases Cited
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (standing requires concrete, particularized, and imminent injury)
- Raines v. Byrd, 521 U.S. 811 (Congress cannot confer Article III standing by statute)
- Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (injury must be concrete though it need not be tangible)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (agency IPR proceedings need not satisfy Article III standing requirements)
- Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir.) (estoppel under § 315(e) does not itself constitute injury when petitioner lacks activity creating infringement risk)
- JTEKT Corp. v. GKN Automotive Ltd., 898 F.3d 1217 (Fed. Cir.) (appellant must supplement record to show concrete plans creating substantial risk of infringement)
- E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996 (Fed. Cir.) (standing found where petitioner had concrete, ongoing operations likely to infringe)
- Momenta Pharm., Inc. v. Bristol‑Myers Squibb Co., 915 F.3d 764 (Fed. Cir.) (no standing where petitioner had ceased development and had no concrete plans)