ironSource v. Digital Turbine — Federal Circuit Dismisses PTAB Appeal for Lack of Standing After Claim Amendments

Background

Digital Turbine held U.S. Patent No. 11,157,256, titled “Instant Installation of Apps,” covering mobile application installation technology. ironSource initiated post-grant review (PGR) proceedings at the PTAB, which invalidated original claims 1 through 22 of the patent. However, the PTAB accepted Digital Turbine’s revised motion to amend, allowing substitute claims 23 through 37 to replace the invalidated claims. ironSource appealed the PTAB’s decision to allow these substitute claims, but Digital Turbine challenged ironSource’s Article III standing to bring the appeal.

Court’s Holding

In a precedential opinion authored by Chief Judge Moore, the Federal Circuit dismissed the appeal for lack of Article III standing. The court found that ironSource’s evidence, a declaration from a senior executive, failed to establish injury in fact. The declaration discussed planned product features related to the original patent claims but did not adequately tie those features to the substitute claims 23 through 37 that were actually at issue on appeal. The court emphasized that when a patent owner amends its claims during post-grant review, a petitioner’s standing evidence must keep pace with those amendments. Generic assertions of potential infringement risk based on the original claims were insufficient to demonstrate a concrete and particularized injury from the narrower substitute claims.

Key Takeaways

• When challenging amended or substitute patent claims on appeal from the PTAB, the petitioner must demonstrate standing specifically tied to those new claims, not just the original claims that were invalidated.
• Standing declarations must be updated to address substitute claims when a patent owner successfully amends during inter partes or post-grant review proceedings.
• Vague assertions about planned product features are not sufficient to establish Article III injury in fact; specific evidence connecting planned activities to the particular claims at issue is required.

Why It Matters

This precedential decision creates an important procedural requirement for PTAB petitioners. Companies that successfully challenge original patent claims but face substitute claims must carefully reassess and document their standing with respect to the new claims before appealing. The ruling could allow patent owners to strategically craft substitute claims that are difficult for petitioners to show standing against, potentially insulating amended claims from appellate review. Patent challengers should build and preserve detailed evidence of their commercial activities relative to any substitute claims proposed during PTAB proceedings.