Before Moore. Appeal from the Patent Trial and Appeal Board.

Summary: Standing based on potential infringement liability requires concrete plans for future activity which will create a substantial risk of future infringement or will likely lead to a patentee claiming infringement.

Viavi sued Platinum Optics Technology (“PTOT”) for patent infringement in two civil actions that were dismissed with prejudice. While the district court cases were still pending, PTOT filed an inter partes review petition challenging the patent asserted in the civil actions. After the district court cases were dismissed, the Board issued a final written decision holding that PTOT failed to show the patent claims were unpatentable. PTOT appealed the Board’s findings.

Although a party does not need Article III standing to appear before an administrative agency, it must have standing to seek review of an agency’s final action in federal court. Here, the Federal Circuit determined that PTOT lacked standing and dismissed the appeal. PTOT claimed it had standing because it had a substantial risk of facing future infringement claims by Viavi. In support of its argument, PTOT first pointed to a letter from Viavi which stated that Viavi believed PTOT would be required to infringe Viavi’s patent to fulfill their supply agreements. However, the Federal Circuit noted that it was sent before the civil actions were dismissed with prejudice and concluded that PTOT’s speculation about future suits based on the letter was insufficient to establish standing. Next, PTOT submitted a declaration stating that it was developing new models of its products and anticipated that Viavi would again assert the patent-in-suit. The Federal Circuit found the declaration unpersuasive, noting that the declaration did not provide development plans or the particulars of the models, and did not describe how the new models might relate to the patent-in-suit. The Federal Circuit concluded that PTOT failed to establish it had concrete plans for future activity that would create a substantial risk of infringement or likely motivate Viavi to assert a claim of infringement. PTOT therefore lacked standing to appeal the Board’s decision.

PLATINUM OPTICS TECHNOLOGY INC., v. VIAVI SOLUTIONS INC.

Editor: Sean Murray