Undue Process: You Can Ask the PTO to Review a Patent, but if They Blow it, You may be Powerless to Appeal

In JTEKT Corp. v. GKN 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 not unpatentable, because Appellee, JTEKT, lacked standing to appeal.

JTEKT filed a petition alleging that claims 1–7 of the ’440 patent were invalid. After the Board instituted as to all challenged claims, GKN disclaimed claims 1, 4, and 5, so the IPR focused on the patentability of claims 2 and 3.

Under the IPR statute, any person or entity may petition the Patent Office to institute an IPR proceeding. 35 U.S.C. § 311(a). There is no requirement that the petitioner have Article III standing, as “[p]arties that initiate [IPRs] need not have a concrete stake in the outcome; indeed, they may lack constitutional standing.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016).  The statute also provides that an unsuccessful petitioner may appeal an adverse final written decision. 35 U.S.C. § 141(c).  However the Federal Circuit has held that the statute does not do away with the Article III standing requirement.  PhigenixConsumer Watchdog, stressed that the “obligation to
establish an injury in fact” for appellants “remains firm.”  In order to demonstrate the requisite injury in an IPR appeal, the appellant/petitioner must show that it is engaged or will likely engage “in an[] activity that would give rise to a possible infringement suit.”

The fact that JTEKT had no product on the market at the present time does not preclude Article III standing, either in IPRs or in declaratory judgment actions.  But where the party relies on potential infringement liability as a basis for injury in fact, but is
not currently engaging in infringing activity, it must establish that it has concrete plans for future activity that creates a substantial risk of future infringement or likely cause the patentee to assert a claim of infringement.  While JTEKT has submitted two declarations in support of its standing, these declarations do not establish that its planned product would create a substantial risk of infringing the claims on appeal.

Because JTEKT has failed to establish an actual injury sufficient to confer Article III standing, we dismiss this appeal.  Assuming the correctness of the Federal Circuit reasoning, this is another demonstration of how ill-conceived the AIA was.  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.  Where is the justice in such a scheme?  Should there be estoppel with respect to a decision that cannot be reviewed?  That sounds even more unjust.

Posted in IPR

In Search of the End: Determining the Expiration Date of a Utility Patent

Calculating the expiration date of a U.S. Utility Patent is not particularly difficult, but it can be confusing — so confusing in fact that the U.S. Government occasionally blows it — see U.S. Patent No. 7,604,811, which issued long after it expired.

For patent issuing from applications filed before June 8, 1995, the term is the longer of 17 years from issue, or 20 years form its earliest effective filing date (pursuant to 35 USC 154(a)(2)).  That’s more than 20 years ago — who cares?  Applications filed before June 8, 1995, are still pending.  U.S. Patent No. 10,016,914 on Positive Displacement Molding of Plastic Parts issued on July 10, 2018, and five such patents issued in 2017.  Although rare, it is still a possibility that must be taken into account.

The vast majority are governed by 35 USC 154(a)(2), which provides:

Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed.

Simply stated, you take the earliest effective filing for the patent (other than a provisional application filing date or a foreign filing date and add 20 years.  However three adjustments must be considered. First, patent term adjustment (PTA) under 35 USC 154(b) may extend the term because of Patent Office delays in examining and issuing the patent.  Second, patent term extension (PTE) under 35 USC 156 may extend the term because of regulatory delays in clearing the subject matter of the patent.  Third, and finally, the term of the patent is subject to any terminal disclaimers made (to avoid double patenting rejections).  Terminal disclaimers are usually, but not always, indicated on the first page of the patent, but the file wrapper should always be consulted (1) to identify any terminal disclaimers not reflected on the first page, and (2) determine the effect of the terminal disclaimer.


Federal Circuit Revises Opinion, But Still Holds Subject Matter Unpatentable

IN SAP AMERICA, INC., v. INVESTPIC, LLC, [2017-2081] (August 2, 2018), the Federal Circuit revised its May 15, 2015, Opinion, as a result of InvestPic’s Motion for Rehearing.  The Federal Circuit still affirmed judgment on the pleadings that all of the claims of U.S. Patent No. 6,349,291, on systems and methods for performing certain
statistical analyses of investment information, but provided additional coverage of the Reexamination claims.


Posted in 101