Introduction

On July 10, 2019, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made a decision in General Electric Company v. United Technologies Corporation. United Technologies Corporation (“UTC”) is the owner of U.S. Patent No. 8,511,605 (“the ‘605 patent”), titled “Gas Turbine Engine with Low Stage Count Low Pressure Turbine.”

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.” Thus, the ‘605 patent “impedes its ability to use [General Electric Company’s] 1970s geared-fan engine design as a basis for developing and marketing future geared turbofan engine designs.” “Appellees General Electric Company (“GE”) sought 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.” The U.S. Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB”) issued that “the evidence did not show claims 7–11 of the ’605 patent to be unpatentable for obviousness.” GE petitioned for an appeal and the Federal Circuit has jurisdiction.

Decision

Per the standard, “not every party to an IPR will have Article III standing to appeal a final written decision of the Board” and for GE to have a standing in this case “an appellant must have suffered an injury in fact that has a nexus to the challenged conduct and that can be ameliorated by the court.” GE’s claimed injuries must be proven to be “‘concrete and particularized’, not merely ‘conjectural or hypothetical.’”

First, GE’s Chief IP Counsel and General Counsel of Engineering for GE Aviation, Mr. Long, claimed competitive harm to support their appeal standing. However, GE had nothing more than speculative evidence of the competitive harm. GE does not provide evidence of the loss of bids due to offering “only a direct-drive engine design,” or that a “direct-drive engine design was [submitted] to Boeing because of the ’605 patent.” The only evidence supplied by Mr. Long was “GE expended some unspecified amount of time and money to consider engine designs that could potentially implicate the ’605 patent,” which has no merit due to the statement being speculative.

Second, GE claimed economic losses to support their appeal standing. GE argued economic losses for their research and development costs “sustained by attempts to design engines that could implicate the ’605 patent and engines that do not implicate the ’605 patent.” GE did not provide proof of expenses due to research and development of similar designs to the ‘605 patent or costs of research and development costs due to designing around the ‘605 patent. The only evidence GE provided of a design similar to the ‘605 patent was their 1970s geared-fan engine, which does not provide grounds for an economic loss or imminent injury.

For the reasons above, the Federal Circuit dismisses the appeal.

Conclusion

This decision determines that without substantial evidence for an appeal, under Article III the case will be dismissed. GE’s entire case was based purely on speculation of their research, development, and costs meaning they had no standing to appeal a decision from the PTAB.

Full General Electric Company v. United Technologies Corporation decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2497.Opinion.7-10-2019.pdf

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