house keysUnder the AIA statute, anyone may file an IPR petition with the PTAB.  So presumably anyone who challenges a patent in IPR and loses can appeal to the Federal Circuit, right?  As one of my fellow bloggers would say, “Not so fast, my friends!”

While anyone may file an IPR petition, not all may pursue an appeal of an adverse PTAB decision.  According to a recent decision by the Federal Circuit, a petitioner must prove that it has a concrete stake in the outcome of the proceeding in order to have standing on appeal.  While standing is not necessarily required to appear before an agency (like the PTAB), it is a requirement for pursuing an appeal of an agency decision in federal court.

In particular, the Federal Circuit held that a petitioner must demonstrate, with evidence, that it has suffered or will suffer some “injury-in-fact” that can be redressed in court.

By way of example, in the context of a patent challenge, a petitioner may seek to establish standing by showing that it faces a risk of infringing the patent, or that it is an actual or prospective licensee of the patent.  It is not enough for a petitioner to argue simply that it is a competitor in the field, unless it has also suffered or will suffer some injury related to the patent.

What about the fact that the petitioner would later be estopped in court from challenging the patent on the bases raised in the IPR proceeding – isn’t that an injury?  No, says the Federal Circuit – the petitioner must demonstrate injury related to enforcement of the patent, such as engagement in some activity that could give rise to an infringement suit.

What are the practical implications?  If you are not facing a threat of infringement, be careful in deciding whether to challenge a patent before the PTAB and, if so, in selecting what prior art to assert – you may not get another shot!  On the flip side, if you successfully defend a patent in IPR, consider a motion to dismiss any appeal if your adversary doesn’t operate in the field or face any threat of infringement.