Article III: Standing Over Patent Appeals and Case Law Development

By Eric Saparli

December 17, 2024

Article III: Standing Over Patent Appeals and Case Law Development

12.17.2024

By Eric Saparli

Graphic - New York State Bar Association General Practice Section

The Article III Cases and Controversies Clause of the U.S. Constitution draws boundaries of federal judicial power.[1] The constitutional standing doctrine limits the group of litigants empowered to bring a lawsuit in federal court to ensure that federal courts do not exceed their authority.[2] To meet standing, the party must prove that (1) the party “suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the defendant and (3) that is likely to be redressed by a favorable judicial decision.[3] However, when the party tries to contest the administrative decision, the requirements of immediacy and redressability can be relaxed but the complaining party must prove injury in fact.[4] This article will explore the Federal Circuit court decisions concerning standing over patent appeals.

Legal Standard of Injury in Fact and Medimmune v. Genentech Inc.

The decisions from the U.S. Supreme Court divide injury in fact as flowing from either past conduct or future conduct. When injury in fact comes from past conduct, the injury must be “concrete and particularized” and “actual or imminent, not ‘conjectural’ or ‘hypothetical.’”[5]

With respect to future injury, decisions from the Supreme Court have indicated flexibility in a legal standard. For example, in Davis v. Federal Elections Com’n, the court determined that the party encountering prospective injury has standing to sue where “the threatened injury is real, immediate, and direct.”[6] However, in Clapper v. Amnesty Int’l USA, the dissenting opinion of four judges disagreed with the majority, which held that the alleged injury had to be “certainly impending” because the future is inherently uncertain and standing requires a “reasonably likely” or “highly likely” degree of certainty.[7] Recognizing that “‘imminence’ is concededly a somewhat elastic concept,”[8] the dissent emphasized that, in some occasions, the court used other phrases such as “reasonable probability,” suggesting “less than absolute, or literal, certainty.” This interpretation suggests that case law uses the word “certainly” as if to emphasize rather than literally define the immediately following term “impending.”[9]

Medimmune, Inc. v. Genentech Inc.

 The Supreme Court applied a similarly flexible interpretation in Medimmune, Inc. v. Genentech Inc., a case involving the alleged breach of a licensing agreement.[10] The parties entered into a licensing agreement wherein Medimmune (petitioner) obtained rights to use Genentech’s (respondent’s) product. Once the product was patented, Genentech demanded that Medimmune pay royalties. Although Medimmune believed it did not owe any royalties and the patent at issue was invalid and unenforceable, it paid royalties under protest to avoid termination and a potential patent infringement suit. Medimmune then brought an action for a declaratory judgment that it did not owe any royalties because the petitioner’s product did not infringe on any valid claim of the respondent’s patent. The district court dismissed the action based on subject matter jurisdiction, and the federal circuit affirmed. However, an appeal to the Supreme Court resulted in a reversal of this ruling.

As an initial matter, the Supreme Court noted that the nature of the dispute does not affect the issue of subject-matter jurisdiction. After an analysis of the cases involving challenges to threatened government actions, the Supreme Court held that lack of imminent threat of harm does not prevent subject matter jurisdiction because “the threat-eliminating behavior was effectively coerced.”[11] In the court’s view, the relevant coercion was rather the consequences of failure not to comply with the claimed contractual obligation.[12]

As support, the court referenced Alvater v. Freeman, which held that payment of royalties did not render a dispute over the validity of a patent nonjusticiable.[13] In that case, several patentees sought enforcement of territorial restrictions under their licensing agreement, and the licensees counterclaimed for a declaratory judgment that the underlying patents were invalid. The court concluded in Alvater that the payment of royalties did not affect justiciability over the declaratory judgment claim.[14] The court also cited Cardinal Chemical Co. v. Morton Int’l, Inc., which held that resolution of infringement does not jurisdictionally moot a counterclaim of invalidity, establishing that the federal circuit’s test that a litigant must have a reasonable apprehension of an impending lawsuit conflicts with the Supreme Court’s decisions.[15]

Finally, the court held that for purposes of the Article III standing, the petitioner was not required to break or terminate the license agreement before seeking a declaratory judgment of invalidity, non-enforceability or non-infringement, and therefore, it need not cease payments under the licensing agreement to resolve contract rights.[16]

The Federal Circuit Court Decisions

General Electric Co. v. Raytheon Technologies Corp.

An assessment of standing was also critically at play in General Electric Co. v. Raytheon Technologies Corp., an appellate matter regarding a dispute that arose over patents held by Raytheon Technology Corp. Raytheon, a major General Electric competitor, held patent claims to an invention related to a configuration for the mounting of a turbofan gas turbine engine to an aircraft pylon.[17] GE petitioned for inter partes review of some of these patent claims held by Raytheon, asserting that these claims were obvious based on the combination of two prior art references, and therefore, that the ideas were not patentable. The Patent Trial and Appeal Board determined that the claims at issue were non-obvious and that the patent was indeed valid. GE requested for rehearing, challenging the board’s application of the legal standard for “teaching away” and “motivation to combine.” The board denied the request for rehearing. GE then appealed to the federal circuit.

In addressing standing, the panel of the federal circuit started an analysis with the proposition that when litigants are afforded the right to appeal an administrative decision, they must prove injury in fact. Then, they indicated that when litigants rely on potential infringement liability as a basis for injury in fact, they must establish that the opposing party has concrete plans for future activity that will create a substantial risk of future infringement or will likely cause the patentee to assert a claim of infringement.[18] Further, the court pointed out that to establish the required injury in fact in an appeal from a final written decision in inter partes review, it is “generally sufficient to show that it has engaged in, is engaging, or will likely engage in activity that would rise to a possible infringement suit.”[19]

The panel held that GE had met its burden of showing that it would likely engage in activity that would prompt an infringement suit. The court indicated that GE made concrete plans for future activity because it (1) spent $10-12 million in 2019 developing a geared turbofan architecture and design; (2) intended to keep developing its geared turbofan engine design that is GE’s technologically preferred design for the next-generation narrow body market and (3) had offered this preferred geared turbofan design to an airframer in response to a request for information the airframer dispatched for its next-generation narrow body aircraft.[20] Even though those allegations did not explicitly demonstrate concrete plans to use the limitations of the challenged patents claims, the court held that GE’s specific investment in continued development of a geared design, its preference to offer this design for sale and its informal offer of this engine to an airframer in an ongoing bidding process together would establish that GE would likely engage in the sale of this engine to customers.

Accordingly, the panel held that such a sale would raise a substantial risk of an infringement suit. It pointed out that GE fully expected that Raytheon would accuse the engine of infringing the patent, which would lead to the reasonable conclusion that GE believed that its preferred design raised a substantial risk of infringement. Although GE did not make its allegations affirmatively, GE’s declarations plausibly established that its preferred engine design substantially risked infringing the patent at issue.[21]

Finally, the panel held that GE’s efforts to show concrete plans raising a substantial risk of future infringement was consistent with the court’s determination in the prior dispute between the same parties. In the prior dispute, the court faulted GE for contending only that GE expended some time and money to consider engine designs that potentially could implicate the patent at issue. Further, it criticized GE for providing no evidence that it actually designed a geared-fan engine. In addition, it condemned GE for providing no evidence that it was in the process of designing an engine covered by the disputed claims.[22] The panel concluded that GE corrected the errors from the prior dispute by alleging concrete plans for future activity that would raise a future risk of infringement, including conception of a geared turbofan engine design, which was likely to cause Raytheon to argue that it fell within the scope of the disputed claims.

Apple Inc. v. Qualcomm Inc.

 Another case involving patent disputes, Apple Inc. v. Qualcomm Inc., addresses whether a licensee has Article III standing to challenge the validity of one or more of multiple patents covered by a license agreement. This appellate proceeding arose following the suit of patentee, Qualcomm, against Apple for infringement of two patents.[23] Apple initiated inter partes review of some of the claims in the patents on the ground of obviousness, and the appeal board issued final written decisions holding that Apple failed to prove that the challenged claims were obvious. Ultimately, the parties jointly requested to dismiss the case because they entered into a licensing agreement. Nevertheless, Apple appealed the board’s final decisions.

Apple argued that it had standing based on its payment obligations under the license agreement because of the holding in Medimmune that ongoing payment obligations as a condition for certain rights provided standing because of the coercive nature of the exchange, as did the threat that they would be sued for infringement after the expiration of the license agreement. In dismissing the appeal for lack of standing, the panel disagreed with Apple’s reliance on Medimmune. The panel indicated that Apple had not alleged that the validity of patents at issue would affect its contract rights, which was fatal for establishing standing under Medimmune, even though Medimmune held that nature of dispute does not affect the ultimate issue of subject-matter jurisdiction. Then, the panel held that Apple did not argue or provide evidence that validity of any patent would not impact Apple’s ongoing payment obligations. Nor did Apple identify any contractual controversy involving its ongoing payment obligations that related to or could be resolved through a validity determination of the challenged patents.[24] Since validity of the patents would not impact Apple’s ongoing payment obligations, the panel held that the analysis of Medimmune did not apply.[25]

Further, since Apple neither provided any evidence that it intended to engage in any activity that might give raise to an infringement suit of the challenged patents when the license expires, nor described any plans to engage in conduct after the expiration of the license that would lead to an infringement suit, the panel rejected Apple’s argument that Qualcomm can sue Apple for infringement after the expiration of the license.[26] The panel also noted that Apple’s declarations in support of standing did not even mention the patents at issue. Next, the federal circuit rejected Apple’s argument that Qualcomm’s prior suit for infringement of the patents at issue provided standing because the dismissal of Qualcomm’s infringement claims with prejudice rendered them not relevant to standing.[27] However, this holding was indirectly contradicted by Medimmune, which cited Cardinal Chemical Co. v. Morton Int’l, where the Supreme Court indicated that resolution of an infringement claim does not moot jurisdiction over counterclaim of patent invalidity.[28]

Moreover, the panel rejected Apple’s argument that Qualcomm’s refusal to grant an irrevocable license or permanent rights in the patents at issue and Qualcomm’s history of asserting patent infringement claims against Apple after an expiration of certain royalty agreements could provide standing. In the panel’s view, reliance on these facts were at best speculation and lacked the specificity necessary to show that Qualcomm was likely to bring claims against particular products after the expiration of the licensing agreement.[29] However, this argument also indirectly contradicted Medimmune, which indicated that Medimmune was not required to cease its contract payments to resolve its disputed contract rights before seeking a declaratory judgment of invalidity, non-enforceability and non-infringement.

Finally, the panel rejected the Apple reliance on the estoppel provision under 35 U.S.C. Section 315(e) that would prevent Apple from arguing that the patents at issue would have been obvious in future disputes because Apple’s harm is doubtful, since it has failed to show that it would likely to engage in activities that could give raise to a potential suit based on the challenged patents after the expiration of the license agreement.

Apple Inc. v. Qualcomm Incorporated

Like the first case, the second Apple Inc. v. Qualcomm Inc. case concerns claims raised by Apple against Qualcomm for patents that Apple claimed to be invalid.[30] Qualcomm once more accused Apple of infringement of the patents at issue, and once again Apple petitioned the board for inter partes review of certain patents. Subsequently, the parties entered into a settlement agreement, resulting in dismissal of the infringement action with prejudice. Then, the board issued a final written decision concluding that Apple had not proven that various claims were unpatentable. Apple appealed, which led Qualcomm to move to dismiss for lack of standing, while Apple filed an opposition supported by the exact same declarations it submitted in the first case.

The panel of the federal circuit rejected Apple’s argument that the decision in the previous case did not explain why the threat of liability if Apple stopped the ongoing payment and the agreement was terminated was not sufficient injury to support standing.[31] Apple requested that if the court lacks jurisdiction, it had to vacate the board’s decision to prevent application of estoppel, relying on United States v. Munssingwear, which requires vacatur of the underlying decision in certain appeals that have become moot during their pendency permitting future relitigation.[32] The panel noted that the doctrine of standing generally assesses whether a personal interest existed at the outset, whereas the doctrine of mootness determined whether it existed throughout the proceedings.[33] In the court’s view, since Apple’s injury disappeared before it invoked jurisdiction of the federal circuit, Apple’s obstacle is lack of standing at the outset of the appeal, not mootness. Then, the panel held that even if the facts of the case could be shaped as mootness, vacatur of the board’s decision would be inappropriate because Apple voluntarily entered into the settlement which destroyed jurisdiction. Relying on U.S. Bancorp Mortg. Co. v. Bonner Mall Partnership, the court held that mootness caused by settlement did not justify vacatur of a judgement under review.[34]

In the dissenting opinion, Judge Newman agreed with Apple that it had standing because the accused products were likely to continue to be in commerce when the license expires. She noted that the federal circuit’s extensive precedent supported the holding that a patent licensee had standing to challenge validity of the patent to which it was licensed permitting to challenge the decision on appeal in federal court.[35] Further, Judge Newman did not agree with Qualcomm’s argument that Apple’s challenge to a few patents would not relieve Apple of its payment obligations, and therefore, Apple would not have standing as to these patents because the court’s precedents did not support this argument.[36] Moreover, Judge Newman pointed out that the only time standing to appeal was rejected was when the challenger had no direct or economic interest in the outcome of the appeal. For example, in Consumer Watchdog v. Wisconsin Alumni Research Foundation, the court denied standing to appeal a Patent Trial and Appeal Board decision because the challenger was a “non-profit consumer rights organization” and had not alleged that that it was “an actual or prospective competitor . . . or licensee of the patent-in-suit.”[37] In Judge Newman’s view, even the Supreme Court observed that “recreational” or “aesthetic” interest may suffice to establish standing.[38] She opined that unlike nonprofit public-interest litigants, Apple’s injury is imminent and ongoing because Apple can suffer a concrete present harm by having to pay royalties to be free from a patent it believed to be invalid.[39]

Further, Judge Newman pointed out that the estoppel provision under 35 U.S.C. Section 325(e) provided Apple with standing to appeal the board’s decisions and provided the federal circuit with jurisdiction to receive appeals because constitutional considerations were recognized and reflected in the provisions for judicial review. In addition, there was a “strong presumption that Congress intended judicial review of administrative action.”[40] Finally, Judge Newman indicated that the appeal provision under 35 U.S.C. Section 329 was not negated when the appellant was also a licensee, concluding that federal circuit review was an integral part of the new post-granting procedures and did not violate the Constitution when the appellant was a licensee of the patent at issue.[41]

Conclusion

The federal circuit’s decisions show that when litigants relied on potential infringement liability as a basis for injury in fact, they had to establish that they had concrete plans for future activity which would create a substantial risk of future infringement or would likely cause a patentee to assert a claim for infringement. However, complainants do not have to allege concrete plans to use the limitations of the challenged patent claims. In addition, litigants may satisfy injury in fact in an appeal from a final written decision in inter partes review when they show that they have engaged, are engaging or will likely engage in activity that will likely rise to a possible infringement suit.

Aside from the context of a patent licensing agreement including a patent portfolio rather than a single patent, litigants must allege that the validity of patents at issue would affect contractual rights to establish standing under the reasoning of Medimmune, notwithstanding its holding that the nature of the dispute does not affect the issue of subject-matter jurisdiction. In addition, case law shows that prior suits for infringement of challenged patents that were dismissed with prejudice could not provide a basis for standing, despite the holding in Cardinal Chemical Co. that resolution of infringement does not jurisdictionally moot a counterclaim of invalidity. Furthermore, refusal to grant an irrevocable license and a history of asserting patents by a patentee against a licensee after expiration of a licensing agreement could not provide a basis for standing. Moreover, when the Patent Trial and Appeal Board issues a written final decision in post-grant proceedings and parties settle a dispute, courts treat it as lack of standing rather than a point of mootness. Finally, vacatur of an underlying appeal board decision in appeal is inappropriate when parties entered into a settlement because jurisdiction over appeal is destroyed.


Eric Saparli is a patent attorney and is a member of the Intellectual Property Section of the New York State Bar Association and the New York Intellectual Property Association. This article appears in a forthcoming issue of One on One, the publication of NYSBA’s General Practice Section. For more information, please visit NYSBA.ORG/GEN.

Endnotes

[1] U.S. Constitution art III, § 2.

[2] Spokeo, Inc. v. Robins, 578 U.S. 330, 338 (2016) (citing Valley Forge Christian College v. Americans United for Separation of Church and State, Inc., 454 U.S. 464, 473 (1982); Warth v. Seldin, 422 U.S. 490, 498-99 (1975)).

[3] Spokeo, 578 U.S. at 338 (citing Lujan v. Defenders of Wildlife, 504 U.S. 555, 560-61 (1992); Friends of the Earth, Inc. v. Laidlaw Environmental Services (TOC), Inc, 528 U.S. 167, 180-81 (2000)).

[4] Lujan, 504 U.S. at 572 n.7 (“The person who has been accorded a procedural right to protect his concrete interests can assert that right without meeting all the normal standards for redressability and immediacy.”); see Summers v. Earth Island Institute, 555 U.S. 488, 497 (2009) (“Unlike redressability, however, requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute.”)).

[5] Susan B. Anthony List v. Driehaus, 573 U.S. 149, 158 (2014) (citing Lujan, 504 U.S. at 560 (some internal quotations omitted).

[6] Davis v. Federal Election Com’n, 554 U.S. 724, 734 (2008) (citing Los Angeles v. Lyons, 461 U.S. 95, 102 (1983); see also Babbitt v. Farm Workers, 442 U.S. 289, 298 (1979) (“A plaintiff may challenge the prospective operation of a statute that presents a realistic and impending threat of direct injury.”).

[7] Clapper v. Amnesty Int’l USA, 568 U.S. 398, 431 (2013).

[8] Lujan, 504 U.S. at 565 n.2.

[9] Clapper, at 432-33 (citing Babbitt, 442 U.S. at 298 (plaintiff “must demonstrate a realistic danger of sustaining a direct injury” (emphasis added)); Friends of the Earth, Inc. v. Laidlaw Environmental Services (TOC), Inc., 528 U.S. 167, 190 (2000) (“[I]t is the plaintiff ’s burden to establish standing by demonstrating that . . . the defendant’s allegedly wrongful behavior will likely occur or continue”); see also Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139, 153 (2010) (“’reasonable probability’” and “’substantial risk’”); Davis, 554 U.S. at 734 (“realistic and impending threat of direct injury”); Department of Commerce v. United States House of Representatives, 525 U.S. 316, 333 (1999) (“substantially likely” (internal quotation marks omitted)); Clinton v. City of New York, 524 U.S. 417, 432 (1998) (“sufficient likelihood of economic injury”); Pennell v. San Jose, 485 U.S. 1, 8 (1988) (“realistic danger” (internal quotation marks omitted)); Blum v. Yaretsky, 457 U.S. 991, 1001 (1982) (“quite realistic” threat); Bryant v. Yellen, 447 U.S. 352, 367-368 (1980) (“likely”); Buckley v. Valeo, 424 U.S. 1, 74 (1976) (per curiam) (“reasonable probability”)).

[10] Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007).

[11] Id. at 129 (citing Terrace v. Thompson, 263 U.S. 197, 215-16 (1923); see also Steffel v. Thompson, 415 U.S. 452, 459 (1974)).

[12] Medimmune, 549 U.S. at 130 n.9.

[13] Alvater v. Freeman, 319 U.S. 359 (1943).

[14] Medimmune, 549 U.S. at 131 (quoting Alvater, 319 U.S. at 364 (“The fact that royalties were being paid did not make this a ‘difference or dispute of a hypothetical or abstract character.’”); see also Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240 (1937)).

[15] Medimmune, 549 U.S. at 133 n.11 (citing Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83, 98 (1993)).

[16] Medimmune, 549 U.S. at 137.

[17] General Electric Company v. Raytheon Technologies Corporation, 983 F.3d 1334 (Fed. Cir. 2020), denied en banc, No. 2019-1319 (Fed. Cir. Feb. 25, 2021).

[18] Id. at 1341 (citing JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1221 (Fed. Cir. 2018), cert. denied, 139 S.Ct. 2713 (2019); accord Susan B. Anthony List v. Driehaus, 573 U.S. 149, 158 (2014) (“An allegation of future injury may suffice if the threatened injury is ‘certainly impending,’ or there is a “’substantial risk” that the harm will occur.”’ (quoting Clapper v. Amnesty Int’l USA, 568 U.S. 398, 414 (2013))).

[19] General Electric, 983 F.3d at 1342 (quoting Grit Energy Sols., LLC v. Oren Techs., LLC, 957 F.3d 1309, 1319 (Fed. Cir. 2020)).

[20] General Electric, 983 F.3d at 1342.

[21] Id. at 1343.

[22] Id. (citing General Elec. Co. v. United Technologies Corp., 928 F.3d 1349, 1353, 1354 (Fed. Cir. 2019)).

[23] Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021), denied en banc, No. 2020-1561, 2020-1642 (Fed. Cir. July 20, 2021), cert. denied, 142 S. Ct. 2868 (2022).

[24] Id. at 1383-84

[25] Id. at 1384.

[26] Id. (citing Lujan, 504 U.S. at 560 (harm must be “actual or imminent, not conjectural or hypothetical” (citation omitted)); see also JTEKT Corp. v. GKN Auto. Ltd., 898 F.3d 1217, 1221 (Fed. Cir. 2018) (holding appellant lacked standing because it had not established that it had “concrete plans for future activity that creates a substantial risk of future infringement.”)).

[27] Apple, 992 F.3d at 1385.

[28] Medimmune, 549 U.S. at 133 n.11 (citing Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83, 98 (1993)).

[29] Apple, 992 F.3d at 1385.

[30] Apple Inc. v. Qualcomm Inc., 17 F.4th 1131 (Fed. Cir. 2021).

[31] Id. at 1136.

[32] Id. 1136-37 (citing United States v. Munsingwear Inc., 340 U.S. 36, 40 (1950)).

[33] Apple, 17 F.4th at 1137 (citing Uzuegbunam v. Preczewski, 141 S.Ct. 792, 796 (2021)).

[34] Apple, 17 F.4th 1137 (citing U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994)).

[35] Apple, 17 F.4th at 1139-40 (citing Medimmune Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007) (patent licensee has standing to challenge validity of licensed patents, without cancelling the license or breaching the license terms); Already, LLC v. Nike, Inc., 568 U.S. 85, 92 (2013) (the Court observed that when litigation is settled between the parties to an infringement suit, the test for Article III controversy is whether plaintiff “‘could not reasonably be expected’ to resume its enforcement efforts” (quoting Friends of the Earth, Inc. v. Laidlaw Env. Servs. (TOC), Inc., 528 U.S. 167, 190 (2000)); Adidas AG v. Nike, Inc., 963 F.3d 1355, 1357 (Fed. Cir. 2020), cert. denied, 141 S.Ct. 1376 (2021) (“We determined that the patent owner’s refusal to grant appellant a covenant not to sue further confirmed that appellant’s risk of injury was not ‘conjectural’ or ‘hypothetical’”) (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1004-05 (Fed. Cir. 2018)); JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1220 (Fed. Cir. 2018) (the reasonable likelihood of future controversy sufficed to satisfy Article III, although the potential infringer “has no product on the market at the present time [this] does not preclude Article III standing, either in IPRs or in declaratory judgment actions.”); Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1173 (Fed. Cir. 2017) (it suffices under Article III if the challenger is “an actual or prospective licensee of the patent. . . . ”); Powertech Technology Inc. v. Tessera, Inc., 660 F.3d 1301, 1308 (Fed. Cir. 2011) (“. . . in Medimmune. . . . , the [Supreme] Court held that a licensee did not need to repudiate a license agreement by refusing to pay royalties in order to have standing to declare a patent invalid, unenforceable, or not infringed . . . .”)).

[36] Apple, 17 F.4th at 1141 (quoting Apotex, Inc. v. Daiichi Sankyo, Inc., 781 F.3d 1356, 1364-65 (Fed. Cir. 2015) (a licensee has standing to challenge validity even though other barriers to commercial activity remain in place); Arkema Inc. v. Honeywell Int’l, Inc., 706 F.3d 1351, 1358 (Fed. Cir. 2013) (patent owner’s refusal to offer a covenant not to sue “suggests that there is an active and substantial controversy between the parties regarding their legal rights with respect to those patents”).

[37] Apple, 17 F.4th at 1141 (citing Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258, 1260, 1263 (Fed. Cir. 2014).

[38] Apple, 17 F.4th at 1141 (citing Lujan v. Defenders of Wildlife, 504 U.S. 555, 563, 565 (1992) (the asserted injury of being unable to view and study endangered species without concrete plans to do so was not sufficiently “actual or imminent” to establish constitutional standing); Summers v. Earth Island Institute, 555 U.S. 488, 495 (2009) (a member of the Institute, who “asserted, first, that he had suffered injury in the past from development on Forest Services land,” due to timber sales covered by the challenged regulations, did not have standing)).

[39] Apple, 17 F.4th at 1141-42 (citing Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1374 (Fed. Cir. 2019) (“In some circumstances, patent claims may create a controversy sufficient for declaratory judgment jurisdiction even when there is no risk of infringement. . . . ”).

[40] Apple, 17 F.4th at 1143 (citing Bowen v. Michigan Acad. of Fam. Physicians, 476 U.S. 667, 670 (1986); see Smith v. Berryhill, 139 S.Ct. 1765, 1777 (2019) (“[T]he burden for rebutting “the presumption of judicial review” is `heavy’ . . . ”) (quoting Mach Mining, LLC v. EEOC, 575 U.S. 480 (2015))).

[41] Apple, 17 F.4th at 1143 (citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer) (“By reducing two levels of appeal to just one, this change will substantially accelerate the resolution of inter partes cases.”)); see also H.R. Rep. No. 112-98 pt. 1, at 47 (“Inter partes reviews will be conducted before a panel of three APJs. Decisions will be appealed directly to the Federal Circuit.”)).

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