Introduction
In ironSource Ltd. v. Digital Turbine, Inc., the Federal Circuit dismissed an appeal from a Patent Trial and Appeal Board (PTAB) decision on the ground that the petitioner lacked Article III standing. The court held that ironSource failed to demonstrate a concrete and particularized injury in fact. Specifically, ironSource did not establish a sufficient risk of infringement tied to the amended patent claims at issue, which precluded appellate review.
Background
Digital Turbine (DT) owns U.S. Patent No. 11,157,256, directed to technology for installing mobile applications in the background. ironSource petitioned for post-grant review (PGR) challenging the original claims (1–22) on various statutory grounds. During the proceeding, DT filed an initial and revised motions to amend, proposing substitute claims (23–37) that added narrowing limitations.
The Patent Trial and Appeal Board (PTAB) ultimately determined that (1) the original claims were unpatentable; and (2) the substitute claims in the revised motion were patentable because ironSource failed to show, by a preponderance of the evidence, that those amended claims were unpatentable.
ironSource appealed the PTAB’s decision upholding the substitute claims. Before the Federal Circuit, the dispute centered on whether ironSource had Article III standing to pursue the appeal.
ironSource argued it had standing based on a risk of future infringement liability. It pointed to alleged “veiled threats” by DT suggesting that ironSource’s prior product (Aura), particularly its “Click-to-Install” features, infringed DT’s patents. ironSource asserted that these threats forced it to modify its product and business practices and that it wished to reintroduce similar functionality but was deterred by the PTAB’s decision upholding the amended claims.
DT countered that ironSource lacked standing because it failed to demonstrate a concrete and particularized injury. Specifically, DT argued that ironSource had not shown any current or imminent activity that would infringe the substitute claims, nor had it established a sufficient connection between its prior product features and the newly amended claims at issue.
Federal Circuit’s Decision
The Federal Circuit agreed with DT that irconSource lacked standing and dismissed the appeal for lack of Article III standing.
The Federal Circuit reiterated that, while a party need not establish standing to initiate a PTAB proceeding, it must demonstrate standing to appeal an adverse decision. To do so, the appellant must show a concrete and particularized injury that is actual or imminent, such as a substantial risk of future infringement liability. The party must have standing at the time the appeal is filed.
The Federal Circuit found that ironSource did not meet this burden for several reasons:
- No Concrete Plans for Potentially Infringing Activity
Although ironSource had previously developed and marketed a product (Aura) with “Click-to-Install” features, the Federal Circuit found no evidence of concrete plans to reintroduce those features in a manner that would implicate the substitute claims. - Failure to Link Product Features to the Amended Claims
The Federal Circuit emphasized that the relevant inquiry must focus on the substitute claims, which included additional narrowing limitations. ironSource failed to demonstrate how its prior or contemplated product features would satisfy those specific limitations. - Insufficient Evidence of Imminent Infringement Risk
ironSource relied on a declaration describing DT’s alleged “veiled threats” and past business impacts. However, the Federal Circuit found this evidence insufficient because it did not establish a concrete and particularized risk of infringement tied to the claims at issue.
The Federal Circuit rejected ironSource’s contention that past allegations and business impacts alone were sufficient to establish standing. The Federal Circuit found that such assertions must be supported by evidence connecting the alleged risk of infringement to the specific claim limitations at issue, which is something ironSource failed to do.
Because ironSource failed to establish standing, the Federal Circuit did not reach the merits of the PTAB’s decision and dismissed the appeal for lack of jurisdiction.
Conclusion
This decision reinforces the principle that just because a party is able to file a petition for review at the PTAB does not mean it will be able to appeal an adverse decision by the Board. Moreover, the issue of standing can be particularly problematic with respect to amended or substituted claims. Finally, generalized assertions of past disputes or business concerns may be insufficient. When an appellant who is challenging the validity of a patent relies on potential infringement liability as a basis for injury in fact, it should be prepared to show concrete plans for potentially infringing activity and a clear nexus between that activity and the specific claim limitations.