Oblon Files Petition for Certiorari in PTAB Standing Issue in JTEKT vs. GKN Automotive LTD.

December 7, 2018 – Firm News

Oblon has filed a petition for certiorari after the United States Court of Appeals for the Federal Circuit declined its petition for panel rehearing and rehearing en banc on behalf of its client, JTEKT Corporation, an engineering and manufacturing company and subsidiary of Toyota. JTEKT found that its competitor GKN’s patent posed serious roadblocks and raised a potential risk of infringement for a product under development, and challenged the patentability of claims 1–7 via inter partes review (IPR2016-00046). When claims 2 and 3 were confirmed as patentable in the final written decision—and thus the risk of infringement remained—JTEKT appealed, and GKN moved to dismiss the appeal based on lack of standing.

“The Court’s decision is a disappointment as the panel clearly overlooked facts and evidence demonstrating JTEKT’s potential risk for infringement and did not address JTEKT’s economic injury at all,” said W. Todd Baker, Chair of Oblon’s Post-Grant Patent Group and lead counsel for JTEKT.  “Although rehearing is rarely granted at the Federal Circuit, we were hopeful that the Court would have recognized the importance of this issue and its implications on other parties in the future. Because of the importance of this issue, JTEKT is proceeding to the Supreme Court.”

“Unfortunately, the panel’s decision risks creating overly narrow, patent-specific laws that do not consider the broader law necessary to address standing in appeals from all agency actions,” said Lisa M. Mandrusiak, Senior Associate with Oblon. “This significantly limited view of standing undercuts the effectiveness of the IPR scheme and works to discourage these types of administrative proceedings because petitioners faced with invalid competitor patents during the product design process may have no recourse available.”

JTEKT’s petition for certiorari frames the issue as whether Congress conferred standing to IPR petitioners through the IPR statutory scheme.