NYIPLA Files Amicus Brief Advocating for the Supreme Court to Clarify Article III Standing in Appeal from IPR Proceedings

On Friday, July 20, 2018, the New York Intellectual Property Association (“NYIPLA”) filed an amicus brief arguing that the Petition for Writ of Certiorari should be granted in RPX Corp. v. ChanBond LLC, No. 17-1686. See the NYIPLA’s website for the full Brief of New York Intellectual Property  Law Association as Amicus Curiae in Support of Neither Party, RPX Corp. v. ChanBond LLC, No. 17-1686 (July 20, 2018). This case raises the important question of whether the Court of Appeals for the Federal Circuit (“Federal Circuit”) can refuse to hear an appeal by a petitioner from an adverse final written decision in an inter partes review (“IPR”) proceeding, on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for dissatisfied parties to appeal to the Federal Circuit.

While the NYIPLA took no position as to the ultimate merits of RPX’s underlying petition, the Association supports RPX’s right as a dissatisfied party to the IPR proceeding before the Patent Trial and Appeal Board (“PTAB”) to appeal the adverse decision denying RPX the relief it requested from the PTAB. The Association argued that it strongly believes that certiorari should be granted so that the Supreme Court can clarify the law of standing for petitioners on appeal from an adverse final written decision of the PTAB in an IPR.

In the proceedings below, RPX filed a petition requesting IPR, pursuant to the relevant statutory scheme devised by Congress in the America Invents Act, 35 U.S.C. §§ 311-319. The PTAB later issued a final written decision, holding the challenged claims of the patent not unpatentable.

As a dissatisfied party, and pursuant to Section 319, RPX then filed to appeal the PTAB’s decision to the Federal Circuit, to which ChanBond responded with a motion to terminate for lack of Article III standing. After briefing on the motion, the Federal Circuit issued a non-precedential order, finding that RPX lacked sufficient injury-in-fact for standing, and, therefore, dismissed the appeal. For a more detailed discussion on how the Federal Circuit reached its conclusion, in this case and others, see “Rethinking Article III Standing in IPR Appeals at the Federal Circuit.”

In its brief, the Association argues that the Federal Circuit based its decision on an incomplete reading of RPX’s statutory rights and the Supreme Court’s law on standing. The brief argues that the Federal Circuit omitted in its analysis that the statute requires a party dissatisfied with the PTAB’s decision to be able to seek judicial review, and participate in the appeal, as explained in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365 (2018). Further, while Congress cannot statutorily grant standing where there is no injury-in-fact, the court failed to take into consideration that Congress can define an intangible injury (in this case, being dissatisfied with an adverse decision of the PTAB), sufficient to meet the minimum Article III requirements.

Since the Federal Circuit has stopped debating the issue, and because the issue has the potential to impact many petitioners, the NYIPLA believes the Supreme Court should take the Petition to determine whether Section 319 provides a sufficient constitutional basis to allow a dissatisfied petitioner in an IPR to appeal to and adverse final written decision to the Federal Circuit.

The following are excerpts taken from the brief

________

II. THE FEDERAL CIRCUIT’S DECISION BELOW IS BASED ON AN INCOMPLETE READING OF RPX’S STATUTORY RIGHTS

In the Order below, the Federal Circuit summarized its analysis in a non-precedential decision as follows:

As to a right to compel cancellation of claims on un-patentable inventions, this issue was settled in Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014). While that case dealt with the statutes governing inter partes reexamination proceedings, the reasoning applies equally to the relevant statues governing IPR proceedings. See also [Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1175–76 (Fed. Cir. 2017)] (applying the reasoning of Consumer Watchdog in concluding that the IPR estoppel provision does not constitute an injury in fact). “The statute at issue here allowed any third party to request [review], and, where granted, allowed the third party to participate.” Consumer Watchdog, 753 F.3d at 1262. “The statute did not guarantee a particular outcome favorable to the requestor.” Id. RPX “was permitted to request [review] and participate once the PTO granted its request. That is all the statute requires.” Id.(App. 5) (emphasis added).

However, as this Court recognized in Oil States, Congress did more than give RPX, as a petitioner and party to the IPR proceeding, merely the right “to request [review] and participate once the PTO granted its request.”  Rather:

A party dissatisfied with the Board’s decision [here, RPX, as Petitioner] can seek judicial review in the Court of Appeals for the Federal Circuit. § 319. Any party to the inter partes review can be a party in the Federal Circuit. Ibid.

Oil States, 138 S. Ct. at 1372.  In other words, Congress gave RPX, as a dissatisfied party, the right to seek judicial review from an adverse final written decision.

Significantly, the Federal Circuit’s failure to permit the judicial review provided by Congress in 35 U.S.C. § 319 stands in stark contrast to this Court’s opinion in Oil States that is informed by, and relies upon in part, the Federal Circuit judicial review when finding inter partes review, as challenged in that case,  constitutional:

[B]ecause the Patent Act provides for judicial review by the Federal Circuit, see 35 U.S.C. §319, we need not consider whether inter partes review would be constitutional “without any sort of intervention by a court at any stage of the proceedings.”

Oil States, 138 S. Ct. at 1379 (citing Atlas Roofing Co. v. Occupational Safety and Health Review Comm’n, 430 U.S. 442, 455 n.13 (1977)).

Thus, the Federal Circuit’s analysis omitted consideration of the congressionally defined injury-in-fact in Sections 141(c) and 319 of an unsuccessful petitioner being “dissatisfied” with a denial of a petition request, and fails to address whether the denial of the right guaranteed by Congress for a dissatisfied party to file and participate in the appeal exceeded the constitutional limits of Article III standing. See Phigenix, 845 F.3d at 1175-76  (discussing only Section 141(c) and ignoring the language and analysis of Section 319 and the intangible injury of being “dissatisfied”).

This omission is not insignificant.  This Court explained in Spokeo, that Congress can define what type of intangible injury is sufficient to give Article III standing to a party in a proceeding to participate in a challenge to an adverse decision:

In addition, because Congress is well positioned to identify intangible harms that meet minimum Article III requirements, its judgment is also instructive and important. Thus, we said in Lujan that Congress may “elevat[e] to the status of legally cognizable injuries concrete, de facto injuries that were previously inadequate in law.” 504 U.S. at 578, 112 S. Ct. 2130, 119 L. Ed. 2d 351. Similarly, Justice Kennedy’s concurrence in that case explained that Congress has the power to define injuries and articulate chains of causation that will give rise to a case or controversy where none existed before. Id., at 580, 112 S. Ct. 2130, 119 L. Ed. 2d 351 (opinion concurring in part and concurring in judgment).

Spokeo, 136 S. Ct. at 1549 (emphasis added).

Thus, the failure of the Federal Circuit in this case (and its other line of cases) to even consider the fact that Congress defined an intangible injury of a petitioner being “dissatisfied” as being a sufficient injury-in-fact to appeal is clear error and contrary to this Court’s directives in Spokeo. See, e.g., Phigenix, 845 F.3d at 1175-76; see also Consumer Watchdog, 753 F.3d at 1261-62.

As recently pointed out by this Court in SAS, “‘[j]ust as Congress’ choice of words is presumed to be deliberate’ and deserving of judicial respect, ‘so too are its structural choices.’” SAS, 138 S. Ct. at 1355 (citing Univ. of Tex. Southwestern Med. Ctr. v. Nassar, 570 U.S. 338, 353 (2013)).

III.B. THE FEDERAL CIRCUIT’S ANALYSIS IS IN CONFLICT WITH SUPREME COURT DECISIONS AND OTHER CIRCUITS’ DECISIONS

The decision below, and the line of authority it represents at the Federal Circuit, are in conflict with this Court’s decisions upholding Congress’ authority to enact statutes creating legal rights, and confirming that the invasion of those statutory rights can confer Article III standing even though no injury would exist without the statute. Warth v. Seldin, 422 U.S. 490, 514 (1975) (“Congress may create a statutory right or entitlement the alleged deprivation of which can confer standing to sue even where the plaintiff would have suffered no judicially cognizable injury in the absence of statute.”); Linda R.S. v. Richard D., 410 U.S. 614, 617 n.3 (1973) (“Congress may enact statutes creating legal rights, the invasion of which creates standing, even though no injury would exist without the statute.”); see also Lujan, 504 U.S. at 561-62 (“When the suit is one challenging the legality of government action or inaction, the nature and extent of facts that must be averred (at the summary judgment stage) or proved (at the trial stage) in order to establish standing depends considerably upon whether the plaintiff is himself an object of the action (or forgone action) at issue. If he is, there is ordinarily little question that the action or inaction has caused him injury, and that a judgment preventing or requiring the action will redress it.” (emphasis added)).

In Lujan, this Court set out a three-part test to determine standing under Article III:

  1. ‘The plaintiff must have suffered an ‘injury in fact’—an invasion of a legally protected interest which is (a) concrete and particularized, and (b) actual or imminent, not conjectural or hypothetical;”
  2. “[T]here must be a causal connection between the injury and the conduct complained of— the injury has to be fairly . . . trace[able] to the challenged action of the defendant, and not . . . th[e] result [of] the independent action of some third party not before the court;” and
  3. “[I]t must be likely, as opposed to merely speculative, that the injury will be redressed by a favorable decision.”

Lujan, 504 U.S. at 560-61; see also Spokeo, 136 S. Ct. at 1547; Gill v. Whitford, 138 S. Ct. 1916, 1929 (2018).

When Congress creates a statutory right or entitlement, and a party seeking judicial relief is allegedly deprived of such right or entitlement, there is “ordinarily little question” of meeting the standing requirement.  In other words, when someone petitions the government for some action[1] and is allegedly wrongfully denied such relief, it is an easy case to find standing for the aggrieved petitioner. See Warth, 422 U.S. 490; Linda R.S., 410 U.S. 614; Lujan, 504 U.S. 555; Spokeo, 136 S. Ct. 1540; Pub. Citizen v. U.S. Dep’t of Justice, 491 U.S. 440 (1989), 491 U.S. 440; Reporters Comm. for Freedom of Press, 489 U.S. 749; see also Zivotofsky v. Secretary of State, 444 F.3d 614 (D.C. Cir. 2006).[2]

In this sense, the Federal Circuit’s analysis in Phigenix misses the point by failing to recognize that the denial of RPX’s petition here, makes RPX, as the unsuccessful petitioner, the object of the government action or inaction.

This Court has recognized such rights under the Federal Advisory Committee Act (“FACA”), 5 U.S.C. Appx. 1 §§ 1-16 (see Pub. Citizen, 491 U.S. at 449-50 (“As when an agency denies requests for information under the Freedom of Information Act, refusal to permit appellants to scrutinize the ABA Committee’s activities to the extent FACA allows constitutes a sufficiently distinct injury to provide standing to sue.”)), as well as under the Freedom of Information Act, 5 U.S.C. § 552 (see, e.g., Dep’t of Justice v. Reporters Comm. for Freedom of Press, 489 U.S. 749 (1989); Dep’t of Justice v. Julian, 486 U.S. 1 (1988); United States v. Weber Aircraft Corp., 465 U.S. 792 (1984); FBI v. Abramson, 456 U.S. 615 (1982); Dep’t of Air Force v. Rose, 425 U.S. 352 (1976); see also Pub. Citizen, 491 U.S. at 449-50 (“Our decisions interpreting the Freedom of Information Act have never suggested that those requesting information under it need show more than that they sought and were denied specific agency records.”)).

Indeed, contrary to the reasoning offered by the Federal Circuit in its earlier decisions, (cf. Phigenix, 845 F.3d at 1175-76; Consumer Watchdog, 753 F.3d at 1261-62), the allegedly improper denial of a petitioner’s statutorily approved petition to cancel one or more claims of an issued patent is no different in kind than the allegedly improper denial of a petitioner’s request for information under the Freedom of Information Act or the Federal Advisory Committee Act. Thus, we respectfully submit that the Federal Circuit’s holding in RPX is in conflict with this Court’s precedent.

Additionally, in accordance with this Court’s precedents, the D.C. Circuit has determined that when Congress creates a statutory right, the deprivation of that right is enough to satisfy Article III standing. See Zivotofsky, 444 F.3d at 617-19 (Appellant had standing under Article III because the individual right to have “Israel” listed as his place of birth on his passport, conferred to him by Congress, was violated).  Thus, the Federal Circuit’s decision in RPX is not only contrary to Supreme Court precedent, but also creates a circuit split over the meaning of such precedent.

At a minimum, this Court should grant certiorari to address this conflict.

 


[1] In the present case, this injury was compounded because RPX, as petitioner to the Government for relief, was required to pay a fee of over $30,000 to seek this relief, which it claims was improperly denied.

[2] “…when Congress grants a petitioner in an IPR proceeding the right to petition the government to seek specific relief (invalidate one or more claims on the previously issued patent franchise), and when the government (arguably improperly) denies such relief, the denial of such relief is a sufficient injury in fact to provide the Courts with constitutional authority under Article III to hear appeal from that denial by the unsuccessful petitioner.” Charles R. Macedo et al., Rethinking Article III Standing in IPR Appeals at the Federal Circuit, IPWatchdog (June 12, 2018).

The Author

Charles R. Macedo

Charles R. Macedo is a Partner at Amster, Rothstein & Ebenstein LLP, where he advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. He has successfully recovered domain names registered to others using clients’ trademarks.
Mr. Macedo is also the author of the book, The Corporate Insider’s Guide to U.S. Patent Practice, originally published by Oxford University Press.

For more information or to contact Mr. Macedo, please visit his Firm Profile Page.

Charles R. Macedo

David Goldberg focuses on domestic and international trademark law. He helps clients protect their brands domestically by researching trademark availability, filing applications for trademark registration and maintaining those registrations. He also works in close collaboration with a network of experienced counsel who provide the same services in other countries around the globe.

CLICK HERE to view his firm profile page.

Charles R. Macedo

Chandler Sturm is a Law Clerk at Amster, Rothstein & Ebenstein LLP, where she works on all areas of intellectual property law, including patent, trademark and copyright law. She is a law student at Fordham Law School, and a graduate of Villanova University with a degree in mechanical engineering.

Charles R. Macedo

Peter Thurlow is a Shareholder at Polsinelli and the current Vice President of the New York Intellectual Property Law Association (NYIPLA), the primary intellectual property law association in New York with more than 1,250 members. Based on Pete's extensive experience working on matters at the USPTO, he received a second three-year term starting in January 2016 from the U.S. Secretary of Commerce to serve on the USPTO's Patent Public Advisory Committee (PPAC). Based on Pete's significant experience on USPTO post-grant matters, Pete chairs the USPTO's PTAB subcommittee. The PPAC provides an annual report to the White House, U.S. Commerce Department, House and Senate Judiciary Committees, and the USPTO.

For more information or to contact Peter, please visit his Firm Profile Page.

Charles R. Macedo

Frank DeLucia is a Parter with Merchant and Gould. Frank’s practice focuses on patent prosecution, contested proceedings before the USPTO, strategic international management of patent portfolios, invalidity and non-infringement opinions, and client counseling. In addition to his patent practice, Frank has experience in prosecuting trademarks.

For more information or to contact Frank, please visit his Firm Profile Page.

Charles R. Macedo

Robert J. Rando is the founder and lead counsel of The Rando Law Firm P.C. Mr. Rando is a Fellow of the Academy of Court-Appointed Masters and, since 2004, has enjoyed the privilege and honor of judicial appointment as a Special Master in numerous cases involving complex patent law issues. He is a published author and frequent lecturer at law schools and CLE programs on patent law and other IP and constitutional law issues. He is the current Treasurer for the New York Intellectual Property Law Association (NYIPLA) and a member of the NYIPLA Amicus and Legislative Action Committees. He is also the current Chair of the Federal Bar Association (FBA) Intellectual Property Law Section and serves on the FBA National Government Relations Committee.

Charles R. Macedo

Robert Isackson is a Parter with Leason Ellis. Practicing for over thirty years, Rob Isackson is an accomplished, front-line IP litigator, counselor, and advisor fluent in all aspects of intellectual property: patents, trade secrets, trademarks, copyrights and designs. With a primary focus on IP litigation at the trial level, particularly patent and trade secret disputes and commercial disputes over technology issues, Rob’s IP practice includes appellate litigation as well as providing strategic counseling, advice and opinions on strength of IP rights, freedom to operate and litigation risks, patent and trademark prosecution, portfolio assessments, trade secret audits, negotiation and drafting of IP transactions and agreements, and M&A IP due diligence.

For more information or to contact Robert, please visit his Firm Profile Page.

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Discuss this

There are currently 2 Comments comments.

  1. Anon July 24, 2018 7:30 pm

    The late Ned Heller would have immediately shot your premise down: Article III standing can NOT be manufactured on a purely legislative basis as you appear to want.

    This is clearly a problem borne from the poor drafting of the AIA and the mix of multiple forums and the rules for standing (or lack thereof) in those different forums.

    I only have to question the sense of independent review of the NYIPLA given Mr. Macedo’s role in that organization and his role connected to an entity that would clearly benefit from an RPX win (Askaladden – so?)

    This is advocacy not befitting an IPLA type of organization.

  2. Vortmax August 2, 2018 11:32 am

    Chanbond is publicly traded as UOIP with a current market cap of $80M, but stands to earn billions especially if it gets to trial and triple damages are awarded. Classic case of push out technology and then deal with the legal later.

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