Pitfalls When Seeking Judicial Review of IPR Decisions: Standing to Appeal (Part 1 of 3)

Posted by Stuart Duncan Smith on Dec 10, 2020

Stuart Duncan Smith

Seeking judicial review of an IPR decision can be a trap for the unwary. Section 319 permits a “dissatisfied” party to appeal. And while the language may seem simple, it can lead parties astray. This post, which is the first in a series about judicial review of IPR, addresses the first trap for the unwary: the constitutional requirement of standing.

Although Section 319 might be misread to allow any “dissatisfied” party to appeal, the party must still have standing to appeal. Thus, in Droplets v. E*TRADE, 887 F.3d 1309 (Fed. Cir. 2018), the Federal Circuit held that a petitioner that won but was “dissatisfied” with the PTAB’s reasoning still could not appeal. And in SkyHawke v. Deca, 828 F.3d 1373 (Fed. Cir. 2016), a potentially analogous decision concerning reexamination, the court rejected an appeal by a winning patent owner that wanted a different claim construction.

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Topics: "Federal Circuit", IPR, PTAB, Section 319

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