Patent Owners Lack Standing to Force USPTO to Issue Rules regarding Discretionary Denials
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by Dennis Crouch
US Inventor Inc. v. Vidal, 21-40601 (5th Cir. 2022) (unpublished opinion)
US Inventor together with several patent holders sued the USPTO back in 2021 trying to find an injunction from the USPTO Director mandating that she interact and detect-and-comment rulemaking to difficulty criteria for when IPR/PGR discretionary denials are appropriate. In addition, the scenario asks that the USPTO’s Standard Functioning Treatment relating to discretionary denials be set aside as unlawful. Judge Gilstrap dismissed the circumstance for absence of standing. US Inventor Inc. v. Hirshfeld, 549 F. Supp. 3d 549 (E.D. Tex. 2021). On attractiveness, the Fifth Circuit affirmed — discovering that the events here could not show the type of concrete and particularized injuries essential to serve as the foundation for a “case” or “controversy” beneath Short article III of the U.S. Constitution. US Inventor Inc. v. Vidal, — F.4th —, 2022 WL 4595001 (5th Cir. Sept. 30, 2022).
US Inventor and its co-plaintiffs alleged a future hurt of opportunity IPR proceedings that could possibly have been discretionarily denied. But the court below identified that future projection a “speculative chain of possibilities” insufficient for standing. Quoting Clapper v. Amnesty Int’l United states of america, 568 U.S. 398 (2013).
[Plaintiffs] contend their damage is like people in Sierra Club v. Marsh TransUnion Massachusetts v. EPA and City of Dania Seashore v. FAA. But in all individuals instances, and as opposed to that of Plaintiff-Appellants’, the accidents were being actual and imminent they did not involve speculation. Offered the particular, unsure series of activities expected beneath Plaintiff-Appellants’ idea of damage, we locate their damage extra closely analogous to the impermissibly speculative idea of damage rejected in Clapper.
US Inventor (interior citations omitted). US Inventor also sought a ruling that it held “organizational standing” based on the lobbying organization’s ongoing efforts to counteract the government’s allegedly illegal actions. But, the courtroom rejected that idea as inadequate: “redirection of resources toward litigation and lawful counseling are insufficient.”
US Inventor and the other appellants were being represented by Robert Greenspoon DOJ lawyer Weili Shaw argued for the Patent Office environment.



