Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in General Electric Co. v. United Technologies Corp., 17-2497 (July 10, 2019). General Electric filed a petition for inter partes review (IPR) challenging a United Technologies patent directed to a gear-driven gas turbine engine for use in airplanes. The Patent Trial and Appeal Board (PTAB) instituted the IPR and upheld the patentability of four claims. GE appealed.
The Federal Circuit held GE lacked Article III standing, and dismissed the appeal. GE had advanced three theories of harm to support standing—competitive harm, economic loss, and estoppel. Regarding competitive harm, the Court concluded GE’s alleged injuries were too speculative. In particular, GE presented no evidence it lost business or opportunities because it could not deliver a geared-fan engine covered by the upheld patent claims. The Court discussed the “competitor standing” doctrine, explaining it requires government action that changes the competitive landscape. The Court concluded the upholding of patent claims, which did not, for example, affect prices or introduce new competitors into the marketplace, did not alter the competitive landscape so as to give rise to the “competitor standing” doctrine. Regarding economic loss, the Court held GE’s assertions were too speculative. The Court explained GE failed to provide evidence specifying the additional research and development costs it alleged were incurred to design around the upheld patent claims. The Court further found GE had presented no evidence that it was designing an engine covered by the upheld patent claims or that it had definite plans to use the claimed features in the airplane engine market. Regarding estoppel, the Court reiterated that where, as here, the appellant does not currently practice the patent claims and the injury is speculative, the estoppel provision of 35 U.S.C. § 315(e) does not amount to an injury in fact sufficient to support standing.
Judge Hughes, in a separate concurring opinion, explained that, while he agreed with the majority’s outcome under the Court’s existing precedent, he believes the Court should adopt a broader “competitor standing” doctrine. Hughes contended that erroneous PTAB decisions in the IPR context can alter the competitive landscape causing an injury sufficient for standing. Specifically, Hughes asserted that where there are significant design and regulatory costs requiring substantial upfront investment, infringement uncertainty can change the competitive landscape even absent a definite plan to bring an infringing product to market.