May 26, 2020

Respondent Has Standing in Appeal from PTAB

In an opinion addressing the standing of a respondent in an appeal from an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB or Board), the US Court of Appeals for the Federal Circuit concluded that the respondent, unlike the petitioner, is not constitutionally excluded from appearing in court to defend the PTAB’s decision. Personal Audio, LLC v. Elec. Frontier Found., Case No. 16-1123 (Fed. Cir., Aug. 7, 2017) (Newman, J).

Electronic Frontier Foundation (EFF) requested inter partes review (IPR) of a Personal Audio patent directed to a system and apparatus for storing and distributing episodic media files. During the IPR, the PTAB found the challenged claims anticipated and obvious. Personal Audio appealed.

The Federal Circuit addressed whether EFF has standing to participate in the appeal in view of the Court’s earlier decision in Consumer Watchdog v. Wisconsin Alumni Research Foundation. In that case, the Court held that a PTAB petitioner that does not meet the Article III case-or-controversy requirement does not have standing to invoke judicial power and thus does not have standing to appeal to the Federal Circuit from a PTAB decision in an IPR. 

Here, the Federal Circuit noted that Personal Audio, not EFF, is the appellant, and Personal Audio has standing in view of the alteration of its tangible legal rights. Standing to appeal is measured for the party seeking entry to the federal courts for the first time in the lawsuit. With Article III satisfied as to Personal Audio, EFF is not constitutionally excluded from appearing in court to defend the PTAB’s decision in its favor.

© 2020 McDermott Will & Emery


About this Author

Joseph Speyer, Intellectual Property Attorney, McDermott Emery Will Law firm

Joseph Speyer, PhD, focuses on patent prosecution, including drafting and prosecuting patent applications related to electronics, chemistry, materials science, mechanical devices and telecommunications. He also provides freedom-to-operate opinions and litigates in district court and at the US International Trade Commission, where he has provided counsel regarding technologies such as telecommunications, electronics and mechanical devices.

Previously, Joseph was a law clerk at the US International Trade Commission, where he gained experience...