Burden of Production on Article III Standing to Bolster 315(b) Disputes at CAFC?

Two weeks back, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings. Phigenix, Inc. v. ImmunoGen, Inc. (here) The Phigenix decision follows an earlier decision, Consumer Watchdog v. Wisconsin Alumni Research Foundation (Warf) finding the same Article III standing requirement for the now defunct inter partes patent reexamination. Thus, Phigenix was expected given that differences in AIA trial proceedings and patent reexamination are inconsequential with respect to the standing debate (and in virtually all other respects).

While Phigenix is well on the radar of public interest groups and like organizations that seek to institute an AIA trial proceeding on patents of interest, the impact of this decision could complicate appeals for certain operating companies should the en banc decision in Wifi One play out as expected.

As a reminder, the Federal Circuit has recently granted en banc review in Wi-Fi One LLC v. Broadcom. In WiFi One the Court will consider whether judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review. Reading the tea leaves, it seems the court is inclined to answer that question in the affirmative.

Assuming WiFi One goes as expected, and 315(b) disputes become reviewable, the burden of production spelled out in Phigenix could be a boon for certain such disputes.

In Phigenix, the burden of production was explained as:

Because standing involves threshold questions over a court’s authority to hear a dispute, an appellant must identify the relevant evidence demonstrating its standing “at the first appropriate” time, whether in response to a motion to dismiss or in the opening brief, Imposing on an appellant the dual obligations of producing the evidence and producing the evidence early in the litigation comports with the reality that such evidence is “necessarily peculiar to” the appellant and “ordinarily within its possession.” Thus, if there is no record evidence to support standing, the appellant must produce such evidence at the appellate level at the earliest possible opportunity.

(internal citations omitted)

The Court also explained the types of evidence that may be introduced at the appellate level:

[T]he [appellant] must supplement the record to the extent necessary to explain and substantiate its entitlement to judicial review. In so doing, an appellant may submit arguments and any affidavits or other evidence” to demonstrate its standing. Taken together, an appellant must either identify . . . record evidence sufficient to support its standing to seek review or, if there is none because standing was not an issue before the agency, submit additional evidence to the court of appeals, such as by affidavit or other evidence.

(internal quotation marks/citations omitted)

Putting this all together, and again, assuming WiFi One goes as expected, this appellate production could bolster the record in certain privity disputes. For example, in AIA trials where a larger supplier is attacking a problem patent of its customers, should the supplier seek to appeal an adverse decision to the CAFC, Phigenix production might be triggered. In that scenario, the supplier-appellant may be battling a patent that its customers were sued on outside of the 315(b) window. In such scenarios (not all that uncommon), supplier-appellants may have to choose between walking away from the appeal, or perhaps, bolster a privity argument of the patentee by way of additional production on injury/relationship to its customers.

Scott A. McKeown is an author of the Patents Post Grant.