Federal Circuit Summary

Before Prost, Dyk, and O’Malley. Appeal from the Patent and Trial Appeal Board.

Summary: An IPR petitioner lacks standing to appeal an adverse decision by the Board if it sells no infringing products and there is no risk of future infringement or infringement allegations by the patentee.

JTEKT petitioned for IPR of a patent owned by GKN. The Board found some, but not all, of the claims obvious. JTEKT appealed.

The Federal Circuit held JTEKT lacked Article III standing. Although an IPR petitioner need not show an injury in fact to file for IPR, it must do so to appeal an adverse decision to the Federal Circuit. Because JTEKT was not selling infringing goods, JTEKT had to establish “concrete plans for future activity that create[] a substantial risk of future infringement or likely cause the patentee to assert a claim of infringement.” JTEKT could not meet this burden because it had not finalized its product design and, at most, GKN’s patent posed an unspecified risk to “future development.” The Federal Circuit also rejected JTEKT’s argument that IPR estoppel constitutes a separate injury in fact.

This case is: JTEKT CORPORATION V. GKN AUTOMOTIVE LTD.

Edited by: Paul Stewart

Written by: Forrest M. McClellen and Adam Powell