Speculative Injury Insufficient For Standing To Challenge AIA’s First-Inventor-To-File Provision

In MadStad Engineering, Inc. v. U.S. Patent & Trademark Office, Nos. 13-1511, -1512 (Fed. Cir. July 1, 2014), the Federal Circuit affirmed the district court's dismissal for lack of standing.

Mark Stadnyk and MadStad Engineering (collectively "MadStad") filed a constitutional challenge to the America Invents Act ("AIA") against the PTO seeking DJ that the "first-inventor-to-file" provision of the AIA was unconstitutional and seeking a permanent injunction barring enforcement of the AIA. The district court granted the government's motion to dismiss for lack of standing, relying on the Supreme Court's decision in Clapper v. Amnesty International USA, 568 U.S. __, 133 S. Ct. 1138 (2013). MadStad appealed.

On appeal, the Federal Circuit first considered whether it had jurisdiction over the appeal. Looking to the principles of federal jurisdiction, the Court explained that a case can "aris[e] under" an act of Congress even if the claim "'finds its origin' in other legal predicates." Slip op. at 6. Determining a resolution of MadStad's claim, the Court explained, would require interpreting the terms "inventor" and "first-inventor-to-file" in the AIA and the term "Inventor" in the U.S. Constitution. The Court also explained that patent-related matters lie at the heart of the parties' dispute, because a judgment in MadStad's favor would not only result in a declaration that the first-inventor-to-file provision is unconstitutional, but could compel that the entirety of the AIA falls within that provision. Next, the Court explained that placing jurisdiction in the regional circuit courts would upset the "balance" of jurisdiction between the Court and the other circuits because the matters raised in MadStad's complaint were important to the uniform application of patent laws. Id. at 8. The Court thus held that it had jurisdiction over the appeal because MadStad's claims arose under an act of Congress relating to patents.

"[B]ecause this alleged injury is dependent upon the hypothetical, illegal decisions of independent actors, it is not 'concrete, particularized, and actual or imminent.'" Slip op. at 15 (quoting Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139, 149 (2010)).

The Court next examined whether MadStad had standing to assert its claim. The Court reviewed and rejected MadStad's arguments that the AIA forced MadStad to enhance its computer security to prevent theft of its intellectual property, increased the time and effort to file patent...