IP Law Daily, PATENT—Fed. Cir.: Optical components manufacturer’s appeal of IPR decision dismissed, (Aug 16, 2024)

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

Appellant failed to establish necessary standing to challenge PTAB’s decision.

The U.S. Court of Appeals for the Federal Circuit dismissed Platinum Optics Technology Inc.'s (PTOT) appeal challenging the Patent Trial and Appeal Board's (PTAB) decision in an inter partes review, which upheld the validity of Viavi Solutions Inc.’s U.S. Patent No. 9,354,369 (the ’369 patent). The appeal was dismissed on the grounds that PTOT failed to establish the necessary standing to challenge the PTAB’s decision, and thus, the Federal Circuit did not reach the merits of the PTAB's decision (Platinum Optics Technology Inc. v. Viavi Solutions Inc., No. 23-1227 (Fed. Cir. Aug. 16, 2024)).

Background. The appellant, PTOT, is a technology company that specializes in the design and manufacturing of optical components, such as filters used in various imaging and sensor systems. The patent owner/appellee, Viavi, on the other hand, is a global leader in network testing, monitoring, and assurance solutions with a significant portfolio of patents.

The ’369 patent, owned by Viavi, relates to advanced optical filters comprising hydrogenated silicon layers with specific optical properties, notably a high refractive index (n) and a low extinction coefficient (k). It describes an optical filter system that can be used in proximity sensor systems, 3D imaging systems, and gesture recognition systems. The patent's key innovation is achieving a high refractive index while maintaining a low extinction coefficient over the wavelength range of 800 nm to 1100 nm, which enhances the performance of optical filters.

PTOT initiated an inter partes review (IPR) against the patent in question, challenging the validity of several claims. The PTAB ruled in favor of Viavi, concluding that PTOT failed to prove that the claims were unpatentable due to obviousness. PTOT’s arguments, which included citations of various prior art references, were dismissed by the PTAB. The Board emphasized that none of these references disclosed the specific combination of a high refractive index and a low extinction coefficient over the relevant wavelength range. PTOT appealed the PTAB's decision.

Standing analysis. PTOT argued that it faced potential infringement liability due to its continued distribution of bandpass filters similar to those accused in previous Viavi lawsuits and that it was developing new filter models. However, the court found PTOT's arguments insufficient to demonstrate a substantial risk of future infringement or a likelihood that Viavi would assert the ’369 patent against these new models.

PTOT referenced two prior lawsuits where Viavi accused PTOT of infringing the ’369 patent. However, the court noted that the infringement claims related to the ’369 patent were dismissed with prejudice in those cases. PTOT’s speculation about the possibility of a third lawsuit was deemed insufficient to establish an injury in fact. The court cited Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021), to emphasize that mere speculation about a potential lawsuit does not satisfy the requirement for standing.

PTOT also claimed that its ongoing development of new bandpass filters created a risk of future litigation. PTOT submitted a declaration from Yiwei Lin, its Deputy Director of Operation Management, to support that it suffered an injury, in fact, based on its development of new bandpass filters. However, the court found the declaration vague and lacking in specifics about the new filter models. The court emphasized that to establish standing, PTOT needed to show concrete plans for future activity that might lead to infringement, as established in JTEKT Corp. v. GKN Automotive LTD, 898 F.3d 1217 (Fed. Cir. 2018). The appellate court concluded that PTOT failed to meet this requirement.

Conclusion. Thus, the Federal Circuit concluded that PTOT did not have standing to appeal because it failed to establish a real and immediate injury or a substantial risk of future injury related to the ’369 patent. As a result, the court dismissed the appeal without addressing the merits of the PTAB’s decision.

The Case is No. 23-1227.

Judge: Cecchi, C.

Attorneys: Andrew Ryan Sommer (Greenberg Traurig LLP) for Platinum Optics Technology Inc. Megan S. Woodworth (Venable LLP) for Viavi Solutions Inc.

Companies: Platinum Optics Technology Inc.; Viavi Solutions Inc.

Cases: Patent FedCirNews USPTO