from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2016-00531.
E. Ferguson, Weil, Gotshal & Manges LLP, Washington, DC,
argued for appellant. Also represented by Stephen Bosco,
Christopher Pepe; Anish R. Desai, New York, NY.
Michael Valaik, Bartlit Beck Herman Palenchar & Scott
LLP, Chicago, IL, argued for appellee. Also represented by
Patrick Joseph Coyne, Michael Andrew Holtman, Sydney Kestle,
Jeffrey Curtiss Totten, Finnegan, Henderson, Farabow, Garrett
& Dunner, LLP, Washington, DC; Benjamin Aaron Saidman,
Reyna, Taranto, and Hughes, Circuit Judges.
Electric Company petitioned the United States Patent Trial
and Appeal Board for inter partes review of U.S.
Patent No. 8, 511, 605. United Technologies Corporation is
the assignee of the patent. The Board found the claims not
obvious in view of the prior art. General Electric appeals.
For the reasons discussed below, we hold that General
Electric lacks Article III standing and accordingly, we
dismiss the appeal.
United Technologies Corporation ("UTC") is the
assignee of U.S. Patent No. 8, 511, 605 ("the '605
patent"). The '605 patent is generally directed to a
gas turbine engine having a gear train driven by a spool with
a low stage count low pressure turbine. '605 patent,
Abstract. This particular gas turbine engine is designed for
use in airplanes and has an axially movable variable area fan
January 29, 2016, General Electric Company ("GE")
filed a petition for inter partes review
("IPR") challenging claims 1 and 2 of the '605
patent on grounds of anticipation and claims 7-11 of the
'605 patent on grounds of obviousness. After institution,
UTC disclaimed claims 1 and 2, leaving only claims 7-11 at
issue. On June 26, 2017, the United States Patent Trial and
Appeal Board ("Board") issued a Final Written
Decision concluding that the preponderance of the evidence
did not show claims 7-11 of the '605 patent to be
unpatentable for obviousness. GE timely appealed to this
December 29, 2017, UTC moved to dismiss GE's appeal for
lack of standing. UTC asserted that GE lacked standing
because it failed to demonstrate a sufficient injury in fact.
In support, UTC pointed to this court's decisions holding
that an appellant does not automatically possess standing to
appeal an adverse Board decision by virtue of serving its
petitions in the challenged IPR. GE submitted a response on
January 16, 2018, including the Declaration of Alexander E.
Long, GE's Chief IP Counsel and General Counsel of
Engineering for GE Aviation ("First Long
Declaration"). Mr. Long explained that the commercial
aircraft engine business operates on a long life-cycle and
that airplane engines are designed to meet certain
specifications for certain aircraft. Because the design of
aircraft engines can take eight years or more, GE develops
new engines based on old designs. Mr. Long stated that, in
the 1970s, GE developed a geared turbofan engine with a
variable area fan nozzle for NASA. GE asserted that the
'605 patent impedes its ability to use its 1970s
geared-fan engine design as a basis for developing and
marketing future geared turbofan engine designs with a
variable area fan nozzle, thereby limiting the scope of
GE's engine designs and its ability to compete in a
highly regulated industry. Mr. Long also declared that
designing around the '605 patent restricts GE's
design choices and forced GE to incur additional research and
denied UTC's motion without addressing the merits and
ordered UTC to brief the issue in its responsive appellate
brief. The parties subsequently briefed the standing issue.
GE argued that the injuries it suffered include statutory
estoppel, economic loss, future threat of litigation, and
competitive harm. GE relied on the First Long Declaration as
evidence to show its injuries. UTC argued that GE suffered no
injury in fact because: (1) UTC has not sued or threatened to
sue GE for infringement of the '605 patent; (2) GE does
not offer evidence of a concrete and particularized economic
injury because it has not developed an engine that implicates
claims 7-11 of the '605 patent; and (3) statutory
estoppel and the competitive standing doctrine do not apply
heard oral argument on November 7, 2018. Much of oral
argument focused on whether GE had constitutional standing to
appeal and whether general statements made in the First Long
Declaration were sufficient to establish standing. We
subsequently ordered GE to supplement the First Long
Declaration and submit any additional declarations that would
provide greater specificity regarding the asserted injury GE
contends provides sufficient standing to appeal in this
matter. We provided UTC with an opportunity to respond.
party filed its supplemental submission. GE filed an
additional declaration from Mr. Long on November 28, 2018
("Second Long Declaration"). In his second
declaration, Mr. Long stated that Boeing requested
information from GE and several of its competitors for engine
designs for future Boeing aircrafts. Mr. Long also noted that
Boeing requested information regarding designs for both
geared-fan engines and direct-drive engines.
response to Boeing's request, GE researched a geared-fan
engine design that "would potentially implicate
[UTC's] 605 Patent." Second Long Decl. ¶ 5. GE
asserts it "expended time and money researching and
further developing" this technology for the potential
business opportunity with Boeing. Id. ¶ 7.
Ultimately, GE chose not to submit to Boeing a geared-fan
engine design and instead submitted a design for a
direct-drive engine of the type used in GE's current
engine designs. The record does not indicate why GE submitted
a direct-drive engine design instead of a geared-fan engine
design. Nor does Mr. Long state whether GE lost this
particular bid. He contends ...