Recent Cases on the Federal Circuit’s Injury-in-Fact Standard
If you’re involved in an inter partes review (IPR) or a post-grant review (PGR), two forms of review at the Patent Trial and Appeal Board (PTAB) of issued patents, you might think that you have a right to appeal from a less-than-satisfactory outcome. After all, the statutes governing both procedures provide a right of appeal to any IPR or PGR party dissatisfied with the PTAB’s final written decision, see 35 USC 319 and 35 USC 329. But as a pair of recent Federal Circuit precedential opinions indicate, there are standing limits to that broad right of appeal, specifically the Federal Circuit’s application of the injury-in-fact requirement.
In Incyte Corp. v. Sun Pharm. Ind., No. 23-1300 (Fed. Cir. May 7, 2025), Incyte challenged (in a PGR) a Sun Pharmaceuticals patent on using deuterium to improve a drug’s metabolic properties. The PTAB found that Incyte had not met its burden to show that the patent’s claim were obvious, and Incyte appealed that outcome. But the Federal Circuit turned away the appeal without ever reaching the issue of whether the patent’s claims were obvious, on the basis that Incyte lacked Article III standing.
Anyone can challenge an issued patent by filing a request for an IPR or a PGR. See 35 USC 311(a) and 321(a) (IPRs and PGRs may be filed by “a person who is not the owner of a patent”). Proceedings for IPRs and PGRs are handled by the PTAB, which is within the USPTO. PTAB proceedings are therefore administrative proceedings within the executive branch, making the PTAB an “Article I court,” outside of the Federal Judiciary, which are Article III courts.
Tribunals like the PTAB hear any cases that they are statutorily authorized to consider. Article III courts, on the other hand, are Constitutionally limited to hearing cases or controversies. US Const., Article III, Section 2. Thus while any non-patent-owner may seek to invalidate a patent with an IPR or PGR, only those parties who present a case or controversy have standing to appeal a PTAB ruling. For there to be standing, the appellant must show that it has “(1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the [appellee, and] (3) that is likely to be redressed by a favorable judicial decision.” Spokeo v. Robins, 578 US 330, 338 (2016).
Incyte argued its standing on two possible grounds: first, that it faced potential infringement liability, and second, that it should be granted standing on the competitor standing doctrine. In an opinion authored by Chief Judge Karen Moore, a Federal Circuit panel found wanting both of Incyte’s proposed grounds for standing. As to the potential infringement liability, Incyte’s claimed plans to introduce an infringing drug were seen as “too speculative to show concrete plans” to develop a potentially infringing drug. Incyte had provided seed money for development of an infringing drug only one month before filing its appeal, and the court saw this as “at best, a wish to enter a market with no concrete plan how to do so.”
Regarding the competitor standing doctrine, the court noted that for the doctrine to apply there has to be a government action that increases competition or aids competitors of an appellee. Citing prior cases, the court adhered to the previous view that the Board upholding a patent’s validity does not provide competitor standing, at least in the absence of concrete plans involving potential infringing activity.
Can a patentee ever lack standing to appeal the results of an IPR or PGR? Not if any claim of the patent was found invalid by the Board – that’s certainly an injury in fact that provides a solid basis for standing. But what if the patent’s claims survived, and the patentee still wants something more? That was the issue in Dolby Labs. v. Unified Patents, No. 23-2110 (Fed. Cir. June 5, 2025). In an IPR challenging one of Dolby’s patents, Dolby identified nine other entities it felt should have been identified as real parties in interest (RPIs) in the IPR challenge. (Unified Patents is a member-based organization that seeks to promote innovation by protecting against patent assertion by non-practicing entities that own patents.) The PTAB upheld the patent’s validity, but declined to adjudicate whether other RPIs should have been indicated as part of the IPR.
The issue is important because IPR petitioners (including RPIs) are estopped from raising in other proceedings (including before the Office and in the courts) grounds “that the petitioner raised or reasonably could have raised” in the IPR, 35 USC 315(e). Dolby sought to have the alleged RPIs uncovered, and as a party to the IPR dissatisfied with this portion of the Board’s disposal, it appealed on this basis.
Alas, the Federal Circuit, in another opinion authored by Chief Judge Karen Moore, dismissed the case because of a lack of standing by Dolby. Since Dolby could not make out an injury in fact, there was no case or controversy that provided Article III standing. With regard to Dolby’s contention about the estoppel effect of the IPR outcome on future (potential) proceedings or litigation, the court noted that Dolby still has the opportunity to raise the issue in any future proceedings involving the alleged RPIs.[1]
As these two cases illustrate, the ability to appeal the results of an IPR or PGR should not be taken for granted. Article III standing for appeals is a barrier that needs to be taken into account when considering filing an IPR or PRG, and especially when considering an appeal.
[1] As to whether the estoppel (or potential estoppel) from an IPR counts as an injury-in-fact to an IPR petitioner, this was found in an earlier case not to constitute an injury-in-fact to a petitioner who is not engaged in activity that could give rise to a possible infringement suit. See Phigenix v. ImmunoGen, 845 F.3d 1168 (Fed. Cir. 2017).