US Inventor, Inc. v. United States Pat. & Trademark Off
Authored by: Jeremy J. Gustrowsky
In a recent decision, the Federal Circuit affirmed the dismissal of a lawsuit brought by US Inventor, Inc. and National Small Business United against the United States Patent and Trademark Office (USPTO). The groups had asked the USPTO to create new rules that would limit its ability to start certain patent review proceedings—specifically, inter partes review (IPR) and post-grant review (PGR)—when small business or independent inventor patents were at stake. After the USPTO denied their petition, the groups sued, claiming the denial violated administrative law and the America Invents Act.
The heart of the case was whether these organizations had “standing”—a legal requirement that at least one member of the group must face a real, non-hypothetical injury from the government’s actions. The court found that the risk of a member’s patent being canceled was too speculative. For harm to occur, a series of uncertain events would have to happen: a third party would need to file a challenge, the challenge would have to meet legal standards, and the USPTO would have to exercise its discretion in a particular way. Because all these steps depend on unpredictable third-party actions, the court ruled that the alleged injury was not concrete or imminent.
The court also distinguished this case from a prior one involving Apple Inc., where Apple was found to have standing because it was frequently sued for patent infringement and regularly filed IPR petitions, making the risk of harm much more direct and likely. In contrast, the patent owner groups here could not show that any single member faced repeated or imminent threats to their patents under the current rules.
Ultimately, the Federal Circuit agreed with the lower court that the organizations lacked standing to challenge the USPTO’s denial of their rulemaking petition. This decision underscores the high bar for establishing standing in federal court, especially when the alleged harm depends on a chain of events involving third parties.