AVX CORPORATION v. PRESIDIO COMPONENTS, INC.
- May 13 2019 |
- Category: CAFC Updates
AVX petitioned for an inter partes review (IPR) of all claims of Presidio’s U.S. Patent No. 6,661,639 (which describes and claims single-layer ceramic capacitors with certain features) based on obviousness. The Patent Trial and Appeal Board issued a final written decision holding some claims unpatentable, but that AVX had failed to establish unpatentability of other claims. AVX appealed the Board’s decision as to the upheld claims and Presidio responded to AVX on the merits but also argued that AVX lacks the standing required by Article III of the Constitution to appeal the Board’s decision. The CAFC rejects AVX’s argument that it is injured by the Board’s rejection of its obviousness challenges to the upheld claims because the statutory estoppel provision would prevent it from asserting the same challenges (the merits of which will not have been reviewed by an Article III court if we find no standing) if Presidio asserts those claims against AVX in the future. The CAFC notes that it previously rejected invocation of the estoppel provision as a sufficient basis for standing, and as there is no live controversy on the issue, refuses to decide whether the estoppel provision would have estoppel effect even where the IPR petitioner lacked Article III standing to appeal the Board’s decision to this court. In response to AVX’s argument that the Board’s decision injures AVX because the decision reduces AVX’s ability to compete with Presidio (an argument that relies on decisions that, in nonpatent contexts, have found “competitor standing” to challenge certain government actions), the CAFC finds that the rationale for finding standing in those cases does not carry over to support standing in the present context, where AVX has no present or nonspeculative interest in engaging in conduct even arguably covered by the patent claims at issue. Thus, whatever scenarios of competitive harm are conceivable in other cases, the CAFC finds there is no showing that cancelling the upheld claims would in any way benefit AVX as a competitor or otherwise. Concluding that AVX lacks standing, the CAFC dismisses the appeal and does not reach the merits of the Board’s ruling on the upheld claims.