AVX Corp v. Presidio Components
No. 2018-1106 Fed. Cir. May 13, 2019 Before Circuit Judges Newman, O’Malley, and Taranto.
Presidio makes ceramic capacitors having a “buried metallization” in the dielectric layer. AVX petitioned the PTO for an inter partes review (IPR) of all claims of Presidio’s patent. The Board held some claims unpatentable and that AVX has failed to establish unpatentability of the other claims. AVX appealed as to the upheld claims. Presidio responded to AVX on the merits but also argued that although AVX had a statutory right to appeal, it lacked the standing required by Article III of the Constitution. AVX had standing to file the IPR petition because Article III requirements do not apply to administrative agencies.
The Federal Circuit stated: “For a party to have standing, it must show
(1) an ‘injury in fact,’
(2) ‘a causal connection between the injury and the conduct complained of,’ and
(3) a likelihood that ‘the injury will be redressed by a
favorable decision.’”
An “injury in fact” is “a legally protected interest which is
(a) concrete and particularized” and
“(b) actual or imminent, not conjectural or hypothetical.”
An injury is concrete if it is “real” rather than “abstract,” though it need not be “tangible.” An injury is particularized if it “affect[s] the plaintiff in a personal and individual way.”
AVX made two arguments in support of its Article III standing. First, AVX argued that it was injured by the Board’s rejection of its obviousness challenges to the upheld claims because the statutory estoppel provision (§315(e)) would prevent it from asserting the same challenges in an Article III court if Presidio asserted those claims in the future. This argument was rejected because, among other reasons, the Court had not decided whether the estoppel provision would have the effect that AVX wanted, i.e., whether it would be estoppel even if Article III standing was lacking.
Secondly, AVX argued that the Board’s decision upholding certain claims injured AVX because it has lost “competitive standing.” The Court had recognized that while a patent claim could have a harmful competitive effect on a would-be challenger if the challenger was currently using the claimed features or nonspeculatively planning to do so in competition. In this case AVX lacked standing because it had not shown that it was engaging in, or had nonspeculative plans to engage in, conduct even arguably covered by the upheld claims. The court did not reach the merits of the ruling on the upheld claims.
Read more: Federal Bar member attorneys may access the full case summary by Barnwell Whaley attorney Ernest Lipscomb in the June issue of Federal Circuit Case Digest.
Additionally, you may read the full opinion here.
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Ernest “Lip” Lipscomb is a registered patent attorney with Barnwell Whaley law firm with offices in Charleston, SC and Wilmington, NC.
