by Dennis Crouch

My prior post on DuPont v. Synvina focused on the obviousness of a claimed range in the context of inter partes review (IPR) proceedings. The decision also raises a question of standing — whether the patent challenger DuPont had standing to appeal the IPR decision favoring the patentee Synvina.

E.I. DuPont de Nemours v. Synvina C.V. (Fed. Cir. 2018)

The patent act provides a couple of limits on who may file a petition to institute an IPR. The petitioner must be “a person” and may not be either the patent owner nor a person (or privy) who was sued for infringing the patent more than 1-year before the petition filing date.* Notably absent – the IPR statute does not require the petitioner to have any reason for challenging the patent or any actual dispute with the patentee.

Courts are different – a lawsuit cannot be filed by just any person. Rather, the plaintiff must have “standing” — a an actual case or controversy that the lawsuit can resolve. Standing is required at every stage of court litigation. This creates a bit of a difficulty for IPR proceedings: Although no standing is required for a patent challenger to pursue an IPR proceeding — standing is required once the case goes to the Federal Circuit on appeal. In this situation, the patentee always has standing — their patent is under risk of being cancelled. However, the patent challenger needs to show that it has an actual stake in the outcome of the decision — even though the Patent Act appears to provide a right-of appeal to any “party dissatisfied” with the IPR outcome.

In a 2016 decision in Spokeo, the Supreme Court explained that standing requires that a plaintiff must have:

(1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the defendant, and (3) that is likely to be redressed by a favorable judicial decision.

Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016). When a harm has already occurred, the injury-in-fact is easy to find. However, in pre-injury declaratory situations — the injury requirement may be met by a potential injury “of sufficient immediacy and realty.” ABB Inc. v. Cooper Indus., LLC, 635 F.3d 1345 (Fed. Cir. 2011). In Consumer Watchdog, however, the Federal Circuit noted in dicta that the immediacy requirement “may be relaxed” in situations like this “where Congress has accorded a procedural right to a litigant, such as the right to appeal an administrative decision.” Consumer Watchdog v. Wis. Alumni Research Found., 753 F.3d 1258 (Fed. Cir. 2014).

Here, DuPont – the patent challenger – has (apparently) never been accused of infringing the Synvina patent; does not believe that it presently infringes the patent; and is not paying any royalties based upon the patent’s validity. However, the Federal Circuit identified a controversy based upon the fact that DuPont’s factory has the capability of infringing:

Such a controversy exists here because DuPont currently operates a plant capable of infringing the ’921

patent.

I’ll note here that the court appears to have written this as a broad statement that could apply in many untold situations, including declaratory judgment actions. However, later courts may cabin-in the holding to the specific facts of this case.

If you remember my prior post, the patent at issue covers a method of making a “green” plastic-precursor known as FDME from plant sugars (fructose). In reaching its decision, the court walked through several bits of evidence that all come together to show that the DuPont plant has the capability use the claimed invention in its factory:

According to DuPont’s declarations, the process conducted at its plant uses the same reactants to generate the same products using the same solvent and same catalysts as the ’921 patent. Likewise, the temperature and PO2 ranges used at the plant overlap with those claimed in the ’921 patent. At the very least, this indicates that DuPont “is engaged or will likely engage in an activity that would give rise to a possible infringement suit.” Quoting JTEKT

In its decision, the Federal Circuit also noted two additional facts that it saw as supporting standing:

At the Board Synvina argued that DuPont had copied elements of Synvina’s invention and put them in a DuPont application (the board found this not compelling). Synvina has refused to grant DuPont a covenant not to sue.

Together, these “further confirm that DuPont’s risk of liability is not conjectural or hypothetical.”

With the standing requirement met, the Federal Circuit was able to hear DuPont’s argument and agreed that the claims are obvious.