In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final written decision of the Patent Trial and Appeal Board (PTAB). The appellate decision, authored by Judge Cecchi, District Judge, United States District Court for the District of New Jersey, sitting by designation, dismissed the appeal of Platinum Optics Technology, Inc. (PTOT), a Taiwanese optical filter manufacturer, for lack of standing. The CAFC held that PTOT failed to show an injury in fact that was concrete, particularized, and imminent, as required by the Constitution and the case law.
The case involved U.S. Patent No. 9,354,369, owned by Viavi Solutions, Inc., which patent relates to optical filter technology used in 3D motion sensing. PTOT had challenged the patentability of the ’369 patent in an IPR proceeding, arguing that the claims were obvious in light of prior art references. However, the PTAB found that PTOT did not prove that the claims were unpatentable and issued a final written decision in favor of Viavi. Before PTOT petitioned for IPR of the ’369 patent, Viavi had sued PTOT for infringement of the ’369 patent in two separate actions in the Northern District of California, but both cases were dismissed with prejudice.
PTOT appealed the PTAB’s decision to the CAFC, claiming that it had standing to appeal based on two grounds: (1) potential infringement liability from supplying existing bandpass filters overseas that could be imported into the U.S. by third parties, and (2) development of new models of bandpass filters that could implicate the ’369 patent. However, the CAFC rejected both arguments, finding that PTOT did not provide sufficient evidence or specificity to support its allegations of future harm.
The CAFC noted that PTOT’s first argument relied on a letter from Viavi that suggested that PTOT could not supply non-infringing products due to the scope of Viavi’s patents, but that letter was sent before the district court dismissals with prejudice, and PTOT did not address how that letter affected its current or future activities. The CAFC found that PTOT’s second argument was based on vague and conclusory statements from its deputy director of operation management, who did not identify any specific plans or products that would implicate the ’369 patent. The CAFC concluded that PTOT’s “unsubstantiated speculation” about future litigation was insufficient to show a substantial risk of future infringement that would constitute an injury in fact.
The Platinum Optics decision emphasizes the need for appellants to show concrete and particularized evidence of actual or imminent harm that is fairly traceable to the challenged patent and redressable by a favorable judicial decision. The CAFC will not accept speculative or hypothetical arguments based on potential future activities or assertions that are not supported by specific facts or concrete plans. The decision may limit the ability of some IPR petitioners to appeal from adverse PTAB decisions in the absence of active district court litigation, and if they have not already developed or marketed specific products that likely fall within the alleged scope of the challenged patent.
In short, while “IPR petitioners need not concede infringement to establish standing to appeal,” “vague and conclusory statements are insufficient to establish … concrete plans for [potentially infringing product] development[.]”
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