John Dragseth Quoted in Law360 Article "Who Can Appeal PTAB Decisions? Here's What We Know."

Fish Senior Principal John Dragseth was recently quoted in Law360‘s article “Who Can Appeal PTAB Decisions? Here’s What We Know,” on July 9, 2019.

Anyone can challenge a patent at the Patent Trial and Appeal Board. But the Federal Circuit has not been as welcoming when someone is unhappy with the board's decision. Here's a look at what the court has said about who can and cannot appeal a PTAB loss.

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The Federal Circuit in a recent ruling described its current line of cases as establishing, generally speaking, that such a challenger must show it is engaged, or will likely engage, in activities that "would give rise to a possible infringement suit."

Put another way: "You have to be pretty darn close to making something that pretty much infringes," John Dragseth of Fish & Richardson, P.C., said.

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More recently, AVX was denied a chance to argue against the PTAB's decision about a Presidio electronics patent. While the companies had squared off in patent litigation before, there had not been any lawsuits over this patent. AVX also did not have concrete plans to make a product that would infringe.

Along similar lines, JTEKT said a patent belonging to rival GKN Automotive posed a risk to its development of a vehicle drivetrain. Finding JTEKT lacked standing, the Federal Circuit emphasized that JTEKT's product hadn't been finalized and was still evolving.

"If it's so cloudy, if you're infringement plans are a fog, no go," Dragseth said of standing in such situations. "There's got to be some meat on your plans to allegedly infringe."

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One case that some believe could define at least some of those boundaries is a dispute between General Electric and United Technologies. The Federal Circuit heard arguments in the case last fall.

Both companies make jet engines, and GE has argued United's patents create barriers to its development of new engines. This leads to higher design costs and limits GE's ability to compete against United, the company has said, while maintaining there is a realistic danger it will be sued for infringement.

When determining standing, one element the Federal Circuit has looked at is whether the controversy is of "sufficient immediacy." Dragseth said the case could shed additional light on the immediacy requirement.

Read the full article here.