IRONSOURCE LTD. v. DIGITAL TURBINE, INC.

Authored by: Jeremy J. Gustrowsky

In a recent decision, the Federal Circuit dismissed an appeal by ironSource Ltd. challenging substitute patent claims approved by the Patent Trial and Appeal Board (PTAB). The case involved U.S. Patent No. 11,157,256, owned by Digital Turbine, Inc., which covers technology for downloading and installing mobile device applications in the background rather than sending users to an app store. ironSource had petitioned for post-grant review of the patent’s original claims, and the Board found those original claims unpatentable. However, the Board also granted Digital Turbine’s motion to amend the patent, replacing the original claims with narrower substitute claims. It was ironSource’s challenge to those substitute claims that ran into trouble on appeal.

The central issue was whether ironSource had “standing” to bring its appeal. Standing is a constitutional requirement under Article III. It means that a party bringing a case to court must show a real, concrete injury, not just a hypothetical one. While anyone can file a petition at the PTAB without proving standing, the rules change once a party seeks review in federal court. At that point, the appellant must demonstrate it faces a genuine risk of harm, such as potential infringement liability.

ironSource tried to establish standing through a declaration from one of its executives, who described how Digital Turbine had made indirect threats that ironSource’s “Click to Install” features infringed Digital Turbine’s patents. ironSource had previously modified and then suspended the product in question (called “Aura”) in response to those threats. The executive stated that ironSource wanted to reintroduce the features but felt prevented from doing so by the Board’s approval of the substitute claims.

The Federal Circuit found this evidence fell short. The court noted that Digital Turbine’s alleged threats related to the parent patent (U.S. Patent No. 10,782,951) and the original claims of the ‘256 patent, all of which had already been found unpatentable. The substitute claims, however, included two new narrowing limitations that were not present in the original claims. ironSource’s declaration never addressed these added limitations or explained how its products would implicate them. In other words, ironSource failed to draw a line between what it wanted to sell and the specific claims it was challenging on appeal.

The court distinguished this situation from prior cases where appellants successfully showed standing with less-than-explicit evidence. In those cases, the appellants’ declarations still tied their products or plans to the actual claim limitations at issue. Here, ironSource’s evidence simply did not make that connection. Without a demonstrated link between the narrower substitute claims and ironSource’s products or future plans, the court concluded there was no concrete injury to support standing and dismissed the appeal for lack of jurisdiction.

This case serves as an important reminder for patent challengers: winning at the PTAB is only part of the equation. If you plan to appeal any unfavorable aspect of a Board decision, you need to build a clear evidentiary record tying your products or concrete business plans to the specific claims you are challenging. General references to a patent family or original claims that have already been canceled will not be enough.