Avx Corporation v. Presidio Components, Inc. , 923 F.3d 1357 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
AVX CORPORATION,
Appellant
v.
PRESIDIO COMPONENTS, INC.,
Appellee
______________________
2018-1106
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00636.
______________________
Decided: May 13, 2019
______________________
GEORGE ELLSWORTH QUILLIN, Foley & Lardner LLP,
Washington, DC, argued for appellant. Also represented
by RUBEN JOSE RODRIGUES, Boston, MA; MICHAEL ROBERT
HOUSTON, RICHARD SPENCER MONTEI, Chicago, IL.
GREGORY F. AHRENS, Wood, Herron & Evans, LLP, Cin-
cinnati, OH, argued for appellee. Also represented by
BRETT A. SCHATZ.
______________________
Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.
2 AVX CORPORATION v. PRESIDIO COMPONENTS, INC.
TARANTO, Circuit Judge.
Presidio Components, Inc., which manufactures and
sells a variety of ceramic capacitors, owns U.S. Patent No.
6,661,639, which describes and claims single-layer ceramic
capacitors with certain features. Competitor AVX Corpo-
ration manufactures and sells a variety of electronic com-
ponents, including capacitors. AVX petitioned the Patent
and Trademark Office (PTO) for an inter partes review
(IPR), under 35 U.S.C. §§ 311−319, of all 21 claims of the
ʼ639 patent, asserting several grounds for unpatentability
based on obviousness under 35 U.S.C. § 103. The Patent
Trial and Appeal Board, acting pursuant to delegated au-
thority, see 37 C.F.R. §§ 42.4, 42.108, instituted a review of
all claims under 35 U.S.C. § 314. In August 2017, the
Board issued a final written decision under 35 U.S.C.
§ 318. Although it held claims 13–16 and 18 unpatentable,
the Board held that AVX had failed to establish unpatent-
ability of all other claims, i.e., claims 1−12, 17, and 19−21
(the “upheld claims”).
Presidio does not appeal the Board’s decision as to the
unpatentable claims, but AVX appeals the Board’s decision
as to the upheld claims. Presidio responds to AVX on the
merits but also argues that AVX, though it has a statutory
right to appeal, see 35 U.S.C. §§ 141, 319, lacks the stand-
ing required by Article III of the Constitution to appeal the
Board’s decision. Because we conclude that AVX lacks
standing, we dismiss the appeal and do not reach the mer-
its of the Board’s ruling on the upheld claims.
I
The specification of the ʼ639 patent describes the rele-
vant features of the claimed capacitors. Each capacitor has
a dielectric layer sandwiched between two “end blocks,”
which are made from “composite material” that is either
conductive or covered by a conductive coating. ʼ639 patent,
col. 3, lines 9–23. In some embodiments described in the
specification, and in all claims in dispute on appeal, each
AVX CORPORATION v. PRESIDIO COMPONENTS, INC. 3
capacitor has a “buried metallization” in the dielectric
layer, which is connected to the end blocks by at least one
conductive, metal-filled “via.” Id., col. 7, lines 46–60. The
buried metallization varies the capacitance of the device.
Id., col. 7, lines 60–61. The dielectric and composite-mate-
rial layers are laminated together, cut into chips, and sin-
tered to produce monolithic capacitors that are structurally
sound. Id., col. 3, lines 2–9. The capacitors are cheap and
easy to produce, and the thin dielectric layers give them
high capacitances. Id.Claim 1 is illustrative for present purposes:
1. A capacitor comprising:
an essentially monolithic structure comprising at
least one composite portion sintered with a ce-
ramic dielectric portion,
a buried metallization in the dielectric portion and
at least one conductive metal-filled via extend-
ing from the buried metallization to the compo-
site portion,
wherein the composite portion includes a ceramic
and a conductive metal, the capacitor further
characterized by a feature selected from the
group consisting of:
(a) the composite portion comprises the conduc-
tive metal in an amount sufficient to render
the composite portion conductive, wherein
the composite portion provides an electrical
lead for attaching the capacitor to a metallic
surface trace on a printed circuit board; and
(b) a metallization area partially between the
composite portion and the ceramic dielectric
portion, and a conductive metal coating on
faces of the composite portion not sintered to
the ceramic dielectric portion, whereby the
4 AVX CORPORATION v. PRESIDIO COMPONENTS, INC.
conductive metal coating provides an electri-
cal lead for attaching the capacitor to a me-
tallic surface trace on a printed circuit board.
Id., col. 11, lines 14–35.
When AVX filed its opening brief in this court, it also
submitted a declaration by its general counsel, Evan Slav-
itt, to try to establish its constitutional standing to bring
this appeal to contest the Board’s rejection of its patenta-
bility challenges to the upheld claims. Mr. Slavitt first
characterized AVX’s business strategy. He noted that AVX
spent approximately $31 million on research, development,
and engineering in fiscal year 2017. J.A. 2049 ¶ 6. He also
stated that “AVX protects its advances by properly apply-
ing for patents where appropriate and holds dozens of U.S.
patents relating to capacitors.” J.A. 2049 ¶ 7.
Mr. Slavitt further explained how AVX and Presidio in-
teract in the capacitor market. He noted that, since 2008,
there have been four district court actions between AVX
and Presidio involving potential infringement of various
capacitor patents (belonging to one side or the other).
J.A. 2049–53. 1 In one of those cases, AVX was required to
pay roughly $3.3 million in damages and was enjoined from
selling a capacitor found to infringe a Presidio patent not
involved in this appeal. J.A. 2050 ¶ 13. In AVX’s view, the
true costs of litigation are even higher because “it costs
AVX substantial goodwill in presenting its customers with
alternative products.” J.A. 2053 ¶ 24. Because it can be
1 The suits involved either AVX’s wholly owned sub-
sidiary American Technical Ceramics Corp. or both AVX
and the subsidiary. AVX’s own declarant has not distin-
guished the two corporations for standing purposes. We
determine that AVX lacks standing even if the two corpo-
rations are treated as one. We therefore refer simply to
AVX.
AVX CORPORATION v. PRESIDIO COMPONENTS, INC. 5
difficult to substitute one component for another, Mr. Slav-
itt stated that “even the threat of a permanent injunction
can dissuade customers from choosing a particular capaci-
tor.” J.A. 2054 ¶ 27. He noted that he knew of at least one
customer who would not buy one of AVX’s capacitors be-
cause of the risk of a future injunction. Id. ¶ 28.
With respect to the ʼ639 patent, Mr. Slavitt expressed
his belief that “[t]he threat of future litigation between Pre-
sidio and AVX . . . is substantial” given the parties’ litiga-
tion history. Id. ¶ 29. He noted that AVX would be
“materially hindered” if the Board decision stood and were
given estoppel effect under 35 U.S.C. § 315(e), which would
preclude AVX from repeating, in future litigation, the obvi-
ousness challenges to the ’639 patent that the Board re-
viewed and rejected in this IPR. Id. ¶ 30. Mr. Slavitt
suspected that Presidio would be “especially encouraged to
assert the ʼ639 patent” to gain leverage in negotiations to
settle another pending lawsuit. J.A. 2055 ¶ 32. He as-
serted that even the “substantial threat of litigation” over
the ʼ639 patent “will dissuade some customers or potential
customers from choosing AVX capacitors.” Id. ¶ 33.
II
Because the Constitution limits its grant of the “judi-
cial power” to “Cases” or “Controversies,” U.S. Const., art.
III, § 2, any party that appeals to this court must have
standing under Article III before we can consider the mer-
its of the case. See Lujan v. Defenders of Wildlife, 504 U.S.
555, 559–60 (1992); Arizonans for Official English v. Ari-
zona, 520 U.S. 43, 64 (1997) (“The standing Article III re-
quires must be met by persons seeking appellate review,
just as it must be met by persons appearing in courts of
first instance.”). For a party to have standing, it must show
(1) an “injury in fact,” (2) “a causal connection between the
injury and the conduct complained of,” and (3) a likelihood
that “the injury will be redressed by a favorable decision.”
Lujan, 504 U.S. at 560–61 (internal quotation marks
6 AVX CORPORATION v. PRESIDIO COMPONENTS, INC.
omitted). An injury in fact is “a legally protected interest
which is (a) concrete and particularized” and “(b) actual or
imminent, not conjectural or hypothetical.” Id. at 560 (in-
ternal quotation marks omitted). An injury is concrete if it
is “real” rather than “abstract,” though it need not be “tan-
gible.” Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1548–49
(2016). An injury is particularized if it “affect[s] the plain-
tiff in a personal and individual way.” Lujan, 504 U.S. at560 n.1.
A person does not need to have Article III standing to
file an IPR petition and obtain a Board decision, because
Article III requirements do not apply to administrative
agencies. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2143–44 (2016). An IPR petitioner that lost on some
or all of its challenges before the Board therefore might
lack Article III standing to appeal. Recognizing that possi-
bility, and noting that “the party seeking judicial review
. . . has the burden of establishing” standing, we have
therefore held that “in IPR appeals, ‘an appellant must . . .
supply the requisite proof of an injury in fact when it seeks
review of an agency’s final action in a federal court,’ by cre-
ating a necessary record in this court, if the record before
the Board does not establish standing.” JTEKT Corp. v.
GKN Automotive Ltd., 898 F.3d 1217, 1220 (Fed. Cir. 2018)
(quoting Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168,
1171−72 (Fed. Cir. 2017)). We have added that, “when the
record before the Board is inadequate,” the appellant
“‘must supplement the record to the extent necessary to ex-
plain and substantiate its entitlement to judicial review,’
such as by submitting ‘affidavits or other evidence to
demonstrate its standing.’” Id. (quoting Phigenix, 845 F.3d
at 1173).
AVX does not contend that a statutory right to appeal
itself establishes AVX’s constitutional standing. See 35
U.S.C. §§ 141, 319. We have rejected such a contention,
Phigenix, 845 F.3d at 1175, relying on the Supreme Court’s
explanation that “Congress cannot erase Article III’s
AVX CORPORATION v. PRESIDIO COMPONENTS, INC. 7
standing requirements by statutorily granting the right to
sue to [an appellant] who could not otherwise have stand-
ing,” Raines v. Byrd, 521 U.S. 811, 820 n.3 (1997). See also
Frank v. Gaos, 139 S. Ct. 1041, 1046 (2019) (“Our decision
in Spokeo abrogated [a court of appeals ruling] that the vi-
olation of a statutory right automatically satisfies the in-
jury-in-fact requirement whenever a statute authorizes a
person to sue to vindicate that right.”).
AVX makes two arguments in support of its Article III
standing to appeal. We reject both.
A
AVX argues first that it is injured by the Board’s rejec-
tion of its obviousness challenges to the upheld claims be-
cause, it says, the statutory estoppel provision, 35 U.S.C.
§ 315(e), would prevent it from asserting the same chal-
lenges—the merits of which will not have been reviewed by
an Article III court if we find no standing—if Presidio as-
serts those claims against AVX in the future.
The first paragraph of the estoppel provision declares
that once the Board issues its final written decision in an
IPR, the IPR petitioner may not initiate another PTO pro-
ceeding to challenge the same patent claim on any ground
that the petitioner “raised or reasonably could have raised”
in the Board-decided IPR. 35 U.S.C. § 315(e)(1). The sec-
ond paragraph concerns later non-PTO proceedings:
The petitioner in an inter partes review of a claim
in a patent under this chapter that results in a final
written decision under section 318(a) . . . may not
assert either in a civil action arising in whole or in
part under section 1338 of title 28 or in a proceed-
ing before the International Trade Commission un-
der section 337 of the Tariff Act of 1930 that the
claim is invalid on any ground that the petitioner
raised or reasonably could have raised during that
inter partes review.
8 AVX CORPORATION v. PRESIDIO COMPONENTS, INC.
Id. § 315(e)(2). In AVX’s view, this language means, for ex-
ample, that AVX is now forever barred from asserting in
district court, either in a declaratory judgment action or as
a defense or counterclaim in an infringement action, that
the upheld claims are invalid for obviousness on the same
grounds on which the present IPR was instituted.
We reject AVX’s argument for standing on this basis.
First, we have already rejected invocation of the estoppel
provision as a sufficient basis for standing. In Phigenix, we
held that § 315(e) “‘do[es] not constitute an injury in fact’
when, as here, the appellant ‘is not engaged in any activity
that would give rise to a possible infringement suit.’” 845
F.3d at 1175–76 (quoting Consumer Watchdog v. Wis.
Alumni Research Found., 753 F.3d 1258, 1262 (Fed. Cir.
2014) (discussing similar provision of the inter partes reex-
amination statute that preceded the IPR regime)). We fol-
lowed that ruling in JTEKT. See 898 F.3d at 1221. We do
so again here.
Second, this court has not decided whether the estop-
pel provision would have the effect that AVX posits—spe-
cifically, whether § 315(e) would have estoppel effect even
where the IPR petitioner lacked Article III standing to ap-
peal the Board’s decision to this court. For this court to so
hold, we would have to consider whether that reading of
§ 315(e) is tied to § 319’s right of appeal for any “party dis-
satisfied with the final written decision” of the Board. Re-
latedly, we would also have to consider whether § 315(e)
should be read to incorporate a traditional preclusion prin-
ciple—that neither claim nor issue preclusion applies when
appellate review of the decision with a potentially preclu-
sive effect is unavailable. See Penda Corp. v. United States,
44 F.3d 967, 973 (Fed. Cir. 1994) (“It is axiomatic that a
judgment is without preclusive effect against a party which
lacks a right to appeal that judgment.”); see Kircher v. Put-
nam Funds Tr., 547 U.S. 633, 647 (2006); SkyHawke
Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed.
AVX CORPORATION v. PRESIDIO COMPONENTS, INC. 9
Cir. 2016). We have not addressed those and other consid-
erations bearing on the proper application of § 315(e).
We decline to do so here. The parties have not briefed
the issue; indeed, we have no adversarial presentations on
the issue, because AVX assumes estoppel as a predicate for
its standing argument and Presidio has evidently decided
not to give up a possible future estoppel argument. If, in
the future, a live controversy over the upheld claims arises
between Presidio and AVX, and if either an infringement
action or declaratory judgment action involving those
claims is filed in district court, AVX can, in such an action,
test whether § 315(e) bars it from raising the obviousness
challenges that the Board reviewed and rejected. At that
point, the parties presumably would be adverse on the is-
sue.
Accordingly, we turn to AVX’s second argument for
standing, which focuses on whether AVX currently has a
nonspeculative stake in cancelling the upheld claims.
B
AVX argues that the Board’s decision upholding claims
1–12, 17, and 19–21 of the ʼ639 patent injures AVX because
the decision reduces AVX’s ability to compete with Pre-
sidio. AVX relies on decisions that, in nonpatent contexts,
have found “competitor standing” to challenge certain gov-
ernment actions. But the rationale for finding standing in
those cases does not carry over to support standing in the
present context, where AVX has no present or nonspecula-
tive interest in engaging in conduct even arguably covered
by the patent claims at issue.
We addressed the doctrine of “competitor standing” in
Canadian Lumber Trade Alliance v. United States, 517
F.3d 1319, 1324 (Fed. Cir. 2008). In that case, we exam-
ined the interplay between the North American Free Trade
Agreement and the Continued Dumping and Subsidy Off-
set Act, which distributes antidumping and countervailing
10 AVX CORPORATION v. PRESIDIO COMPONENTS, INC.
duties to harmed domestic producers. One appellant, the
Canadian Wheat Board, had constituent members who al-
legedly competed with U.S. producers receiving the distri-
butions, id. at 1332, including the North Dakota Wheat
Commission, which promoted the sale of wheat from North
Dakota farmers to “take back market share from Canadian
Wheat,” id. at 1334. We held that the Canadian Wheat
Board had shown that it was likely to be injured by the dis-
tribution of duties to this U.S. competitor. Id.“Competitor standing” also appears in other cases in-
volving regulatory law. See id. at 1332 (collecting cases).
In Canadian Lumber, we highlighted the Supreme Court’s
decisions in Clinton v. City of New York, 524 U.S. 417, 433
(1998) (farmers’ cooperative actively negotiating and seek-
ing to buy processing plant had standing to challenge gov-
ernment cancellation of tax benefit affecting purchase),
and Association of Data Processing Service Organizations,
Inc. v. Camp, 397 U.S. 150, 152 (1970) (sellers of data pro-
cessing services had standing to challenge government ac-
tion allowing major new sellers into market). In those
cases, the Court recognized that government actions that
“alter competitive conditions” may give rise to injuries that
suffice for standing. Clinton, 524 U.S. at 433 (quoting 3
Kenneth Culp Davis & Richard J. Pierce, Administrative
Law Treatise 13–14 (3d ed. 1994)); see id. at 432–33 (citing
Inv. Co. Inst. v. Camp, 401 U.S. 617 (1971) (financial com-
panies had standing to challenge Comptroller of the Cur-
rency’s approval of competing bank’s application to run a
collective investment fund)). The D.C. Circuit has articu-
lated a similar theory of “competitor standing.” See, e.g.,
U.S. Telecom Ass’n v. FCC, 295 F.3d 1326, 1331 (D.C. Cir.
2002) (association had standing to challenge FCC’s order
designating a communications network as a common car-
rier, making federal subsidies available to the network);
La. Energy & Power Auth. v. FERC, 141 F.3d 364, 367 (D.C.
Cir. 1998) (electric company had standing to challenge
FERC’s approval of competitor company’s application to
AVX CORPORATION v. PRESIDIO COMPONENTS, INC. 11
sell electricity at market-based rates). As the D.C. Circuit
has made clear, however, not every alleged possible com-
petitive harm suffices: standing has been found where the
plaintiff/appellant challenges a government action that
“provides benefits to an existing competitor or expands the
number of entrants in the petitioner’s market, not an agency
action that is, at most, the first step in the direction of future
competition.” New World Radio, Inc. v. FCC, 294 F.3d 164,
172 (D.C. Cir. 2002) (radio-station licensee did not have
standing to challenge FCC’s renewal of another firm’s li-
cense for a station that did not itself compete with the chal-
lenger, where only possible future competition was shown).
In all the cases to which we have been pointed in which
standing rested on competitive harm, the challenged gov-
ernment action nonspeculatively threatened economic in-
jury to the challenger by the ordinary operation of economic
forces. For example, competitive injury to a challenger is
highly likely where the government action has a natural
price-lowering or sales-limiting effect on the challenger’s
sales (compared to what prices or sales would be in the ab-
sence of the government action), either by directly lowering
competitors’ prices for competing goods or by opening the
market to more competitors. In such circumstances, find-
ings of standing in Canadian Lumber and the other “com-
petitor standing” cases are applications of the standing
requirement that the disputed action must pose a nonspec-
ulative threat to a concrete interest of the challenger. See
517 F.3d at 1332–34; see also Spokeo, 136 S. Ct. at 1548 (“A
‘concrete’ injury must be ‘de facto’; that is, it must actually
exist. When we have used the adjective ‘concrete,’ we have
meant to convey the usual meaning of the term—‘real,’ and
not ‘abstract.’” (citation omitted)).
The government action at issue here is quite different.
The government action is the upholding of specific patent
claims, which do not address prices or introduce new com-
petitors, but rather give exclusivity rights over precisely
defined product features. That sort of feature-specific
12 AVX CORPORATION v. PRESIDIO COMPONENTS, INC.
exclusivity right does not, by the operation of ordinary eco-
nomic forces, naturally harm a firm just because it is a com-
petitor in the same market as the beneficiary of the
government action (the patentee).
A patent claim could have a harmful competitive effect
on a would-be challenger if the challenger was currently
using the claimed features or nonspeculatively planning to
do so in competition, i.e., if the claim would block the chal-
lenger’s own current or nonspeculative actions in the ri-
valry for sales. We have so recognized. See E.I. DuPont de
Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1005 (Fed.
Cir. 2018); Altaire Pharm., Inc. v. Paragon Bioteck, Inc.,
889 F.3d 1274, 1281–84 (Fed. Cir.), remand order modified
by stipulation, 738 F. App’x 1017 (Fed. Cir. 2018) (mem.).
At the same time, we have repeatedly insisted that such
interest in using the claimed features be nonspeculative,
denying standing to IPR petitioners that appeal claim-up-
holding Board decisions where those petitioners lacked
“concrete plans for future activity that creates a substan-
tial risk of future infringement or likely cause the patentee
to assert a claim of infringement.” JTEKT, 898 F.3d at
1221; see Momenta Pharm., Inc. v. Bristol-Myers Squibb
Co., 915 F.3d 764 (Fed. Cir. 2019); Phigenix, 845 F.3d at
1173–75.
Taking all of AVX’s allegations as true, we conclude
that AVX has not shown that it is engaging in, or has non-
speculative plans to engage in, conduct even arguably cov-
ered by the upheld claims of the ʼ639 patent. AVX does not
assert, for example, that it is developing a new capacitor
that Presidio would likely argue falls within the scope of
the upheld claims. Nor does AVX contend that it has set
aside resources to develop such a product but cannot move
forward because the upheld claims stand in the way. The
broad allegations in Mr. Slavitt’s declaration are insuffi-
cient. It does not matter that Presidio has sued AVX over
capacitors that did not contain the buried metallizations
claimed in the ʼ639 patent. See J.A. 2049–53. The general
AVX CORPORATION v. PRESIDIO COMPONENTS, INC. 13
observation that litigation can reduce customers’ goodwill
says nothing about the concrete interest required for stand-
ing to litigate particular claims in this Article III court. See
J.A. 2053 ¶ 24. And AVX’s suspicion that Presidio would
assert the upheld claims against AVX if it had a reasonable
basis for doing so, see J.A. 2055 ¶ 32, does not mean that
there is any reasonable basis right now.
JTEKT confirms the deficiencies of AVX’s allegations.
In JTEKT, the appellant alleged that it was working on a
product that might infringe the relevant patent, but it con-
ceded that “no product [was] yet finalized” and that the
product would “continue to evolve.” 898 F.3d at 1221. De-
spite the nonzero risk of future litigation, we dismissed the
appeal for lack of standing because JTEKT “ha[d] not es-
tablished at th[at] stage of the development that its prod-
uct create[d] a concrete and substantial risk of
infringement or [would] likely lead to claims of infringe-
ment.” Id. In this case, AVX has not pointed to a capacitor
in any stage of development that might implicate the up-
held claims of the ʼ639 patent. AVX lacks the current or
nonspeculative interest in practicing those claims without
which we have repeatedly denied standing in similar cir-
cumstances.
Although JTEKT seems the most directly on point of
our cases, other cases support the same conclusion. In Phi-
genix, the appellant was “a for-profit discovery stage bio-
technology, pharmaceutical, and biomedical research
company” that worked on cancer treatments. 845 F.3d at
1170. Although it did not manufacture any products, Phi-
genix maintained a significant portfolio of intellectual
property. Id. It claimed that it “suffered an actual eco-
nomic injury because the [relevant] patent increase[d] com-
petition” between Phigenix and the patent holder and
because the patent hindered Phigenix’s licensing opportu-
nities. Id. at 1174. We dismissed the appeal for lack of
standing because “Phigenix d[id] not contend that it face[d]
risk of infringing the [relevant] patent, that it [was] an
14 AVX CORPORATION v. PRESIDIO COMPONENTS, INC.
actual or prospective licensee of the patent, or that it oth-
erwise plan[ned] to take any action that would implicate
the patent.” Id. at 1173–74. Our reasoning in Phigenix
applies here with equal force, even though AVX, unlike
Phigenix, manufactures and sells its own products. Like
Phigenix, AVX has not presented allegations that it faces
any risk of infringing the upheld claims of the ʼ639 patent,
that it is a prospective licensee of the upheld claims, or that
it otherwise plans to take action that would implicate those
claims.
Our recent decision in Momenta is also instructive. In
that case, Momenta was developing a biosimilar for a drug
made by Bristol-Myers Squibb (BMS), another pharmaceu-
tical company. 915 F.3d at 766. During the litigation, Mo-
menta’s biosimilar failed Phase I clinical trials, and
Momenta issued a press release noting that it intended “to
exit its participation in the development of . . . five biosim-
ilar programs,” including the program related to BMS’s
product. Id. We rejected Momenta’s attempt to establish
standing because Momenta “made clear that no concrete
plans [were] afoot.” Id. at 770. The same is true here. Mr.
Slavitt’s declaration identifies no concrete plans for AVX to
develop a capacitor that might implicate the upheld claims
of the ʼ639 patent.
Cases where we determined that petitioners did have
standing to pursue their appeals illustrate what is missing
from this case. In Altaire, we held that the appellant had
standing because its injury was “inevitable.” 889 F.3d at
1283. Although an agreement with Paragon prevented Al-
taire from infringing at the time of appeal, three other
things were true: (1) Paragon had already filed a declara-
tory judgment action seeking to terminate that agreement;
(2) after the agreement was terminated or otherwise ex-
pired three years later, Altaire intended to file an Abbrevi-
ated New Drug Application that would amount to an act of
infringement; and (3) Paragon refused to stipulate that it
would not sue Altaire for infringement. Id. at 1282–83; see
AVX CORPORATION v. PRESIDIO COMPONENTS, INC. 15
35 U.S.C. § 271(e)(2)(A). Those facts strongly suggested
the inevitability of an infringement suit, but that inevita-
bility is missing here. At this point, it is just speculation
whether AVX will want to develop or sell a new capacitor
that even arguably falls within the upheld claims of the
ʼ639 patent and so prompt Presidio to file suit.
This case is also quite different from the recent DuPont
case. There, we held that DuPont had standing to appeal
the Board’s decision even though Synvina had never filed
an infringement action against it. 904 F.3d at 1004–05.
But in that case, DuPont had designed and already begun
operating a plant according to technical specifications that
arguably made its conduct infringing. Id. at 1004. The
process at that plant used “the same reactants to generate
the same products using the same solvent and same cata-
lysts” as the relevant patent, making an infringement suit
against DuPont a real possibility. Id. at 1005. As we have
now reiterated several times, AVX is not similarly under-
taking or planning activity that gives it a concrete stake in
obtaining an adjudication of unpatentability of the upheld
claims of the ’639 patent.
Because, for those reasons, AVX has not sufficiently al-
leged current or nonspeculative activities of its own that
arguably fall within the scope of the upheld claims, we con-
clude that AVX has identified no harm to it, competitive or
otherwise, resulting from the Board’s decision. Notably,
AVX offers no argument for how, given our conclusion
about AVX’s own activities, the Board’s decision is likely to
strengthen Presidio’s ability to compete so as to cause harm
to AVX. As a legal matter, Presidio requires no patent to
make or sell what is covered by the upheld claims: a patent
is only a right to exclude, not a right to practice. Bauer &
Cie v. O’Donnell, 229 U.S. 1, 10 (1913). And there is simply
no evidence in this case that, as an economic matter, Pre-
sidio’s ability to compete against AVX is enhanced by the
upheld claims in a way that would harm AVX if AVX lacks
a nonspeculative interest in itself engaging in conduct even
16 AVX CORPORATION v. PRESIDIO COMPONENTS, INC.
arguably within the upheld claims. Presidio’s exclusivity
right might exclude other capacitor makers from making
products covered by the upheld claims, but such a reduc-
tion in the number of AVX’s competitors on its face tends
to help AVX (by reducing competition), not harm it. Cf. Atl.
Richfield Co. v. USA Petroleum Co., 495 U.S. 328, 336–37
(1990) (rejecting respondent’s theory of “antitrust injury”
because petitioner’s pricing scheme “would have worked to
[respondent]’s advantage”). There is no evidence that los-
ing the patent protection of the upheld claims would lead
Presidio to invest less in making and selling its claim-cov-
ered product. Thus, whatever scenarios of competitive
harm are conceivable in other cases, there is no showing
here that cancelling the upheld claims would in any way
benefit AVX as a competitor or otherwise.
We have considered AVX’s other arguments but find
them unpersuasive. Because AVX’s estoppel and “compet-
itor standing” theories both fail, we must dismiss this ap-
peal for lack of jurisdiction in this court. See Ex parte
McCardle, 74 U.S. (7 Wall.) 506, 514 (1868) (“Jurisdiction
is power to declare the law, and when it ceases to exist, the
only function remaining to the court is that of announcing
the fact and dismissing the cause.”).
III
Concluding that AVX lacks Article III standing to ap-
peal the Board’s final written decision, we dismiss the ap-
peal.
DISMISSED