Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

Authored by: Jeremy J. Gustrowsky

A recent decision from the Federal Circuit highlights the importance of having a real and immediate threat of harm before a company can appeal a Patent Trial and Appeal Board (PTAB) decision. In this case, Platinum Optics Technology Inc. (PTOT) tried to challenge the validity of U.S. Patent No. 9,354,369, which covers advanced optical filters made with hydrogenated silicon. PTOT had previously been sued for infringement of this patent, but those lawsuits were dismissed with prejudice, meaning they cannot be brought again on the same grounds.

PTOT argued that it still faced a risk of being sued in the future because it continues to distribute similar bandpass filters and is developing new models. However, the court found that PTOT’s concerns were based on speculation rather than concrete evidence. The only support PTOT offered was a letter from the patent owner, Viavi Solutions Inc., sent before the earlier lawsuits, and a vague declaration from a company director about ongoing product development. The court noted that these did not show any specific plans or details that would make future infringement likely.

The Federal Circuit emphasized that to have “standing” to appeal a PTAB decision, a company must show a real injury or a substantial risk of future injury—mere speculation about a possible lawsuit is not enough. Since PTOT could not demonstrate any concrete plans that would likely lead to another infringement claim, the court dismissed the appeal without even considering the merits of the PTAB’s decision.

This court’s decision here serves as a reminder that companies seeking to challenge a patent in court after a PTAB loss must be able to show a real, immediate risk of being sued for infringement. Without this, the courts will not hear the appeal, regardless of the underlying patent issues.