by Dennis Crouch
JTEKT Corporation vs. GKN Automotive LTD. (Supreme Court 2018)
In 2016, JTEKT (Toyota) an inter partes review (IPR) petition challenging GKN’s Patent No. 8,215,440 (2wd/4wd dual drive-train). During the IPR, GKN disclaimed the broadest claims, and the PTO confirmed validity of the remaining claims. Here, the key difference from the prior art was a negative limitation – that the system coupling is “without a differential gearing.” Wanting to also cancel those claims, JTEKT appealed. Although JTEKT and GKN are competitors, JTEKT has not yet developed a competing product — arguing (without real evidence) that the ‘440 patent was a roadblock to its development project.
On appeal, the Federal Circuit refused to consider the merits. Rather, the court found that the US Constitution prohibited the case — i.e., that JTEKT had no standing to appeal because the petitioner had not alleged any “actual injury.”
In my prior post on the case, I explained:
Standing is an oddball with IPRs. Anyone can file an IPR request and the USPTO will consider that request. The Patent Act directly states that a losing petitioner has a right to appeal if it loses the IPR. . . . Still, the Supreme Court has repeatedly held that the Constitution requires an actual controversy between the parties — and that the Article III courts cannot offer advisory opinions. A particular element in question for appellate IPR standing is injury-in-fact — “an injury that is both ‘concrete and particularized.’” Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016)(non-IPR case).
After being denied substantive hearing at the Federal Circuit, the patent challenger has now petitioned the Supreme Court on the standing issue — the following question:
Can the Federal Circuit refuse to hear an appeal by a petitioner from an adverse final decision in a Patent Office inter partes review on the basis of lack of a patent-inflicted injury-in-fact when Congress has
(i) statutorily created the right for parties dissatisfied with a final decision of the Patent Office to appeal to the Federal Circuit,
(ii) statutorily created the right to have the Director of the Patent Office cancel patent claims when the petitioner has met its burden to show unpatentability of those claims, and
(iii) statutorily created an estoppel prohibiting the petitioner from again challenging the patent claims?
The question here is substantially the same as the petition found in the pending case of RPX Corp. v. ChanBond LLC (17-1686) (awaiting input from the Solicitor General). There is a good chance that briefing in JTEKT will be complete before the Solicitor submits the government brief in RPX. JTEKT would be a good companion case to RPX because it presents the added element of competitor challenge.
Petition: JTEKT_Petition (Filed by Todd Baker and Lisa Mandrusiak at Oblon)