Jtekt Corporation v. Gkn Automotive Ltd.
898 F.3d 1217
| Fed. Cir. | 2018Background
- GKN owns U.S. Patent No. 8,215,440 covering a selectable four-wheel/ two-wheel drivetrain design; claims 2–3 require two side-shaft couplings on the secondary axle.
- JTEKT petitioned for inter partes review (IPR) challenging claims 1–7; the Board instituted review and GKN later disclaimed claims 1, 4, and 5.
- The Board found claims 6–7 unpatentable (Teraoka in view of Burrows) but upheld claims 2–3 as not shown obvious (Teraoka in view of Watanabe), citing lack of reasonable expectation of weight reduction.
- JTEKT appealed the adverse decision on claims 2–3 to the Federal Circuit under 28 U.S.C. § 1295(a)(4)(A).
- The Federal Circuit considered whether JTEKT—an unsuccessful IPR petitioner whose product is still in development—had Article III standing to appeal.
- JTEKT submitted declarations about ongoing product development and a potential risk of future infringement; the court found these insufficient to show a concrete, substantial risk of infringement or likely enforcement by GKN.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether JTEKT has Article III standing to appeal the Board's final decision | JTEKT: ongoing product development and potential infringement risk plus IPR estoppel create a concrete injury sufficient for appeal | GKN: no finalized product, no allegation of infringement, and speculative future risk cannot establish injury-in-fact | Dismissed: JTEKT failed to show a concrete and substantial risk of infringement or other injury-in-fact; estoppel alone is not an injury when no activity risks suit |
Key Cases Cited
- Cuozzo Speed Techs., Inc. v. Lee, 136 S. Ct. 2131 (2016) (IPR petitioners need not have constitutional standing to file at PTO)
- Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017) (appellant must show injury-in-fact to appeal IPR final decision)
- Consumer Watchdog v. Wis. Alumni Research Found., 753 F.3d 1258 (Fed. Cir. 2014) (no standing where petitioner lacks involvement in relevant activity or commercial stake)
- Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016) (injury-in-fact must be concrete and particularized)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) (conjectural or hypothetical injuries insufficient for standing)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (parties need not risk liability before seeking declaratory judgment, but must show concrete dispute or risk)
- DaimlerChrysler Corp. v. Cuno, 547 U.S. 332 (2006) (party seeking review bears burden to establish injury-in-fact)
- Altaire Pharms., Inc. v. Paragon Bioteck, Inc., 889 F.3d 1274 (Fed. Cir. 2018) (no-market product can have standing, but must show concrete plans creating substantial risk of infringement)