Speculative Plans Are Insufficient to Establish Standing in PTAB Appeals

Written by: Nathan D. Reeves and Ningxi Sun

INCYTE CORPORATION v. SUN PHARMACEUTICAL INDUSTRIES, INC. 

Before Moore, Hughes, and Cunningham. Appeal from the Patent Trial and Appeal Board.

Summary: Speculative plans for potentially infringing activity are insufficient to establish Article III standing to appeal the Board’s decision.

Incyte filed a petition for post-grant review of Sun’s patent covering  a compound for treating hair loss. The PTAB found Incyte failed to prove unpatentability. Incyte appealed, and argued that it had standing based on potential infringement liability and the competitor standing doctrine.

The Federal Circuit held Incyte failed to establish an injury in fact sufficient to confer standing. Regarding potential infringement liability, the court found that Incyte failed to demonstrate concrete plans to develop and market a product that would create a substantial risk of future infringement. Rather, Incyte’s development plans were too speculative. For example, the amount of money spent was small and was spread across several related products, some of which would not create a risk of infringement, and Incyte did not identify what portion of its allocated funding was directed toward developing a product covered by the claims. The court also rejected Incyte’s competitor-standing argument because that doctrine also requires a showing of concrete injury.

Editor: Sean Murray