Fish Senior Principal John Dragseth was recently quoted in Law360‘s article “Fed. Circ.’s High Standing Bar May Deter Some PTAB Reviews” on July 12, 2019.
The Federal Circuit's ruling that General Electric can't appeal an unfavorable decision from the Patent Trial and Appeal Board on a rival's jet engine patent illustrates just how high the bar has been set for standing to appeal board decisions, which may cause some companies to think twice about a patent challenge.
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The Federal Circuit has taken a strong interest on the standing question in PTAB cases with a series of recent rulings. While the outer boundaries have been clearly established accused infringers can appeal, groups challenging patents as a public service cannot there is a middle ground with gray areas.
"This [GE ruling] probably fills that middle ground more than any other case," said John Dragseth of Fish & Richardson PC.
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Because there is no standing requirement for IPRs anyone can ask the PTAB to review a patent evidence on things like competitive or economic harm isn't introduced at the board. The Federal Circuit is the first to consider that sort of evidence. GE, for example, submitted to the court two declarations from its chief intellectual property counsel related to the standing issue.
That's in contrast with typical litigation, where such an issue would be tackled by a lower court. By the time the case reached the Federal Circuit, the record would be closed and the parties would argue about that record with no additional evidence submitted.
"This is an important issue where the record not only doesn't exist but couldn't have existed," Smith said.
That can present challenges, as it can be difficult for parties to flesh out arguments and fully make their case on the compressed timeline of an appeal. As a practical matter, Dragseth said attorneys shouldn't waste any time in tracking down a declarant if standing could be an issue on appeal.
"If you are in this situation and you lose an IPR, you should immediately figure out who your knowledgeable declarant is, who your business person is, and start figuring out what that person can say," he said.
Read the full article here.