The US Court of Appeals for the Federal Circuit dismissed an appeal of a post-grant review (PGR) for lack of Article III jurisdiction, finding that the appellant failed to meet its burden to prove it would likely suffer an injury in fact. ironSource Ltd. v. Digital Turbine, Inc., Case No. 2024-1831 (Fed. Cir. Apr. 7, 2026) (Moore, Lourie, Reyna J.J.)
Mobile advertising company Digital Turbine has a patent related to streamlined background processes for downloading and installing mobile applications. That patent is a continuation an earlier related patent which was invalidated during a prior PGR proceeding. Mobile advertising and app monetization platform ironSource once had a product on the market called Aura, which included “Click to Install” features. When faced with what it referred to as “veiled threats” of liability for infringement of the earlier patent, ironSource modified its Aura product – eventually removing it from the market – and petitioned the Patent Trial & Appeal Board for a PGR of the continuation patent’s claims 1 – 22.
During the PGR, the Board held that claims 1 – 22 were all unpatentable pursuant to its earlier decision in the earlier PGR but allowed Digital Turbine to amend the claims. In so doing, Digital Turbine included, among other changes, two narrowing limitations to the claims. The Board concluded that ironSource had not carried its burden of proving that the newly amended claims were unpatentable or ineligible for patent protection. ironSource appealed.
On appeal, the Federal Circuit explained that while Article III standing is not required before the Board, it is required to sustain an appeal of the Board’s decisions. The burden is on the appellant to prove it meets the requirements for standing under federal law at the time of filing. Federal law requires an appellant to prove it has “(1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the [appellee], and (3) that is likely to be redressed by a favorable judicial decision.” Spokeo. Specific to patent cases, the appellant must show concrete evidence of its intended future actions that pose a substantial risk of infringement or an assertion of infringement.
To meet this obligation, ironSource submitted a declaration by one of its senior directors. The declarant discussed past changes and concessions to the Aura product that ironSource had made in light of Digital Turbine’s patent rights. It also stated that ironSource intended to reintroduce the Aura product to the market. Nevertheless, the Federal Circuit held that ironSource failed to meet its burden of tying that potential product’s features to the patent’s amended claims. Instead, ironSource focused on the claims of the original, alleging that they were “substantially identical” to the continuation patent’s claims, i.e., the claims Digital Turbine had previously “threatened” against the company. The Court emphasized, however, that ironSource failed to account for the narrowing limitations in the amended claims and thus failed to prove a likely injury in fact from infringement of the substituted claims.
Finally, the Federal Circuit distinguished General Electric Co., a case in which a declaration provided sufficient evidence for standing because the appellant did tie its future product to the claim limitations at issue, even if “only obliquely.” ironSource’s declaration failed to do even that.
