from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2016-00046.
T. Baker, Oblon, McClelland, Maier & Neu-stadt, LLP,
Alexandria, VA, argued for appellant. Also represented by
Lisa Mandrusiak, Ryan W. Smith.
Mettes, Brooks Kushman PC, Southfield, MI, argued for
appellee. Also represented by Sangeeta G. Shah, Kristin Lee
Prost, Chief Judge, Dyk and O'Malley, Circuit Judges.
Automotive LTD ("GKN") owns U.S. Patent No. 8, 215,
440 ("the '440 patent"). In inter partes review
("IPR"), the Patent Trial and Appeal Board
("the Board") found claims 2 and 3 of the '440
patent not unpatentable. JTEKT Corporation
("JTEKT"), the petitioner in the IPR, appealed.
Because JTEKT lacks standing to appeal, we dismiss the
'440 patent describes a drivetrain for a four-wheel drive
vehicle that is made up of primary and secondary drivetrains.
The drivetrain can be switched between two-wheel drive mode
and four-wheel drive mode. The claimed drivetrain operates to
reduce the number of rotating components when the secondary
drivetrain is disconnected.
petitioned for IPR of the patentability of claims 1-7 of the
'440 patent in IPR2016-00046. The Board instituted IPR on
all challenged claims. After institution, GKN disclaimed
claims 1, 4, and 5. Accordingly, the IPR focused on whether
JTEKT had shown that claims 2 and 3 would have been obvious
over the prior art of Teraoka in view of Watanabe and whether
claims 6 and 7 would have been obvious over the prior art of
Teraoka in view of Burrows. Claims 2 and 3-the claims
currently on appeal-specify that two side-shaft couplings
connect the secondary axle rather than one side-shaft
coupling. These side-shaft couplings provide both transverse
and longitudinal power distribution between the left and
right wheels and the front and rear wheels.
January 23, 2017, the Board held that claims 6 and 7 would
have been obvious over Teraoka in view of Burrows, but that
JTEKT did not show that claims 2 and 3 would have been
obvious over Teraoka in view of Watanabe. The Board decided
that JTEKT had failed to establish that a person of ordinary
skill "would have had a reasonable expectation of
reducing vehicle weight with the proposed modification,"
that being the stated motivation to combine. J.A. 0032.
not appeal the Board's decision with respect to claims 6
and 7. But JTEKT appealed the Board's decision regarding
claims 2 and 3. GKN's motion to dismiss the appeal based
on lack of standing was denied by a motions panel of this
court, which "deem[ed] it the better course for the
parties to address the standing issue in their briefs."
Order, No. 17-1828, ECF No. 23. JTEKT asserts that we have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
the IPR statute, any person or entity may petition the Patent
Office to institute an IPR proceeding. 35 U.S.C. §
311(a). There is no requirement that the petitioner have
Article III standing, as "[p]arties that initiate [IPRs]
need not have a concrete stake in the outcome; indeed, they
may lack constitutional standing." Cuozzo Speed
Techs., LLC v. Lee, 136 S.Ct. 2131, 2143-44 (2016). We
have similarly concluded that "Article III standing is
not necessarily a requirement to appear before an
administrative agency." Consumer Watchdog v. Wis.
Alumni Research Found., 753 F.3d 1258, 1261 (Fed. Cir.
2014) (citation omitted). The statute also provides that an
unsuccessful petitioner may appeal an adverse final written
decision. 35 U.S.C. § 141(c) ("A party to an inter
partes review or a post-grant review who is dissatisfied with
the final written decision of the Patent Trial and Appeal
Board . . . may appeal the Board's decision . . . to the
United States Court of Appeals for the Federal
series of decisions, we have held that the statute cannot be
read to dispense with the Article III injury-in-fact
requirement for appeal to this court. In Phigenix,
Inc. v. Immunogen, Inc., we wrote that "[a]n
appellant's obligation to establish an injury in fact
remains firm even though it need not 'meet all the normal
standards for redressability and immediacy' when, as
here, a statute provides that appellant with a right to
appeal." 845 F.3d 1168, 1172 n.2 (Fed. Cir. 2017)
(citations omitted); see also 35 U.S.C. §
141(c). Phigenix lacked standing to appeal an IPR because it
did not face an actual injury. Phigenix, 845 F.3d at
1176. Phigenix did not argue that it was at risk of
"infringing the [patent at issue], that it is an actual
or prospective licensee . . . or that it otherwise plans to
take any action that would implicate the patent . . . .