Article III Standing for PTAB Appeals Once Again Revisited by Federal Circuit
Last month, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings in Phigenix, Inc. v. ImmunoGen, Inc. (here) The Phigenix decision follows an earlier decision, Consumer Watchdog v. Wisconsin Alumni Research Foundation (Warf) finding the same Article III standing requirement for the now defunct inter partes patent reexamination.
Yesterday, in PPG Industries, Inc., v. Valspar Sourcing, Inc., the Federal Circuit again addressed the issue of standing in appeals from the Patent Trial and Appeal Board (PTAB). At issue in these consolidated appeals was whether PPG Industries, Inc. (“PPG”) had standing to appeal the PTAB’s decisions in two inter partes reexaminations where the patent owner Valspar Sourcing, Inc. (“Valspar”) was the prevailing party. Showcased in this appeal is evidence deemed to satisfy Article III standing for an appeal from the PTAB.
Next the court turned to subsequent events, in particular a covenant not to sue on the patents. This covenant was provided from Valspar (unilaterally) to PPG as part of its additional briefing on Article III standing, the covenant recited:
[Valspar] covenant[s] not to sue PPG Industries, Inc. or any of its subsidiaries or customers (collectively,“PPG”) for infringement of any claim of [U.S. Patent No. 7,592,047] or [U.S. Patent No.8,092,876] as of the date of this Covenant Not To Sue based on PPG’s manufacture, importation, use, sale and/or offer for sale of any currently existing products or use of methods and of prior existing products or prior use of methods.
While the Court found that PPG had Article III standing to bring the appeals at the time of their filing, the Court ruled that PPG’s appeals were mooted on appeal because of the covenant. The Court reasoned that the breadth of the covenant not to sue “necessitate[d]” its conclusion that the case was moot.