IP Law Daily, PATENT—Fed. Cir.: Inventor groups lacked standing to challenge USPTO’s denial of rulemaking petition, (Oct 3, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

District court correctly found that the inventor groups failed to show any concrete, non-speculative injury.

The U.S. Court of Appeals for the Federal Circuit upheld a District of Columbia district court ruling finding that advocacy organizations US Inventor, Inc. and National Small Business United lacked standing to challenge the U.S. Patent and Trademark Office’s (USPTO) denial of their petition for rulemaking. The court concluded that the organizations failed to show that any member suffered a concrete, non-speculative injury traceable to the USPTO’s refusal to limit discretionary institution of inter partes review (IPR) and post-grant review (PGR) proceedings (US Inventor, Inc. v. USPTO, No. 24-1396 (Fed. Cir. Oct. 3, 2025)).

Background. The plaintiffs/appellants, US Inventor, Inc., and National Small Business United, are advocacy organizations representing independent inventors and small businesses, respectively. Both groups have consistently opposed administrative patent review procedures created under the America Invents Act (AIA), arguing they disproportionately harm small entities. The defendant/appellee, the United States Patent and Trademark Office, is the federal agency responsible for administering the patent system, including IPR and PGR proceedings before the Patent Trial and Appeal Board (PTAB).

In August 2020, the inventor groups filed a petition for rulemaking seeking amendments to USPTO regulations at 37 C.F.R. §§ 42.108 and 42.208. They proposed that IPR or PGR should not be instituted if the patent owner objected and satisfied criteria such as being the original applicant, holding small-entity status, and having actually reduced the invention to practice. The USPTO denied the petition in October 2021, noting that the issues overlapped with broader agency rulemaking already underway. In July 2022, the groups filed a lawsuit in the D.C. district court, alleging violations of the Administrative Procedure Act (APA) and the AIA. They claimed the agency unlawfully failed to conclude the matter, provide adequate reasoning for denial, and improperly avoided notice-and-comment rulemaking. The district court dismissed the complaint in July 2023 for lack of organizational and associational standing. The inventor groups appealed.

Standing doctrine. The appellate court, applying D.C. Circuit law, reviewed standing de novo. Citing Lujan v. Defenders of Wildlife, 504 U.S. 555, 560–61 (1992), and Summers v. Earth Island Inst., 555 U.S. 488, 492–93 (2009), the court reiterated that standing requires (1) an injury in fact that is concrete, particularized, and imminent; (2) a causal connection to the challenged conduct; and (3) likelihood of redress. Speculative or conjectural harms do not suffice.

The court agreed with the district court that the alleged injury—the risk of patent cancellation absent the proposed rules—depended on a speculative chain of contingencies. As in Clapper v. Amnesty Int’l USA, 568 U.S. 398, 410–11 (2013), where plaintiffs’ claims rested on a “highly speculative fear” requiring a five-part chain of events, the inventor groups’ claims were similarly dependent on third-party filings, merits determinations, discretionary decisions, and eventual cancellation. Because one or more of these steps was speculative, standing was lacking.

Associational standing. The plaintiffs argued associational standing under the test articulated in Sierra Club v. EPA, 754 F.3d 995, 999 (D.C. Cir. 2014), requiring that at least one member have standing. They identified member company 10Tales, which had faced an IPR petition. However, the PTAB denied institution on the merits, not on discretionary grounds, eliminating any injury tied to the absence of the proposed rule. The court held that the possibility of reconsideration or future petitions was insufficiently concrete.

The appellate court also rejected the claim that the statutory right to petition for rulemaking itself conferred standing. Relying on Gettman v. DEA, 290 F.3d 430, 433 (D.C. Cir. 2002), the court explained that procedural rights can establish standing only if tied to a concrete interest. Here, petitioning the USPTO did not itself protect members’ property rights, and no specific injury apart from the procedural denial was shown.

Comparison with Apple Inc. v. Vidal. The court distinguished Apple Inc. v. Vidal, 63 F.4th 1 (Fed. Cir. 2023), cert. denied sub nom. Intel Corp. v. Vidal, 144 S. Ct. 548 (2024), where Apple successfully challenged USPTO guidance on the “Fintiv factors.” Apple had standing because it was a repeat player in patent litigation, regularly petitioning for IPRs to defend itself. Its past litigation history made future harm “far from speculative.” By contrast, the inventor groups could not show that any member routinely faced IPR or PGR petitions, nor did they allege a record of repeated harms. The difference was dispositive.

Capable of repetition yet evading review. The plaintiffs further argued that the risk of patent cancellation was “capable of repetition yet evading review.” The court rejected this claim, noting that the doctrine addresses mootness, not standing, citing Friends of the Earth, Inc. v. Laidlaw Envt’l Servs. (TOC), Inc., 528 U.S. 167, 190–91 (2000). Because no member had standing at the time of filing, the case could not proceed.

Conclusion. The Federal Circuit concluded that the plaintiffs failed to demonstrate associational standing. Their alleged injuries depended on speculative chains of third-party actions and did not establish a concrete or imminent harm. As such, their APA and AIA claims could not proceed. Thus, the judgment of the district court dismissing the complaint for lack of standing was affirmed.

The Case is No. 24-1396.

Judge: Reyna, J.

Attorneys: Robert Greenspoon (Dunlap Bennett & Ludwig PLLC) for US Inventor, Inc. and National Small Business United. Weili J. Shaw, U.S. Department of Justice, for the USPTO.

Companies: US Inventor, Inc.; National Small Business United

Cases: Patent FedCirNews DistrictofColumbiaNews USPTO GCNNews