Interactive Communications International, Inc. v. Blackhawk Network, Inc.

NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INTERACTIVE COMMUNICATIONS
INTERNATIONAL, INC.,
Appellant
v.
BLACKHAWK NETWORK, INC.,
Appellee
______________________
2025-1632
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2023-
01235.
______________________
ON MOTION
______________________
Before LOURIE, PROST, and CHEN, Circuit Judges.
PER CURIAM.
O R D E R
Blackhawk Network, Inc. moves to dismiss this appeal
for lack of standing. Interactive Communications Interna-
tional, Inc. (InComm) opposes. Blackhawk replies.
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InComm filed a sur-reply. Blackhawk moves for leave to
file a sur-sur-reply, which InComm opposes.
I.
Blackhawk owns U.S. Patent No. 9,865,135 (the ’135
patent), which is directed to a system and method of provid-
ing pre-printed lottery tickets for random draw lotteries
through the retailer’s point of sale (POS) without the use
of additional lottery hardware. InComm petitioned for in-
ter partes review of claims 1–6 of the patent. The Patent
Trial and Appeal Board issued a final written decision con-
cluding that InComm had failed to show the claims were
unpatentable. InComm then filed this appeal.
When InComm filed its opposition to Blackhawk’s mo-
tion to dismiss, it submitted an affidavit from its General
Counsel, Michael D. Gruenhut, to establish its standing to
challenge the Board’s decision on appeal. In that declara-
tion, Mr. Gruenhut states that InComm and Blackhawk
previously entered settlement discussions in which In-
Comm requested but was not granted a covenant not to sue
for infringing the ’135 patent. He further indicates that,
“[u]ntil approximately the end of March of 2025, InComm
provided its customers with a system and method of selling
pre-printed lottery ticket products for random draw lotter-
ies through the retailer[’]s POS without the use of addi-
tional lottery hardware, the same subject matter described
and claimed in the [’]135 Patent.” ECF No. 10 at 123.
In its reply, Blackhawk promised not to sue under the
patent “for sales of pre-printed lottery tickets that occurred
before the end of March 2025 that had lottery numbers pre-
printed on them prior to the time of purchase.” ECF No.
11 at 9. The court then directed InComm to file a sur-reply
addressing Blackhawk’s covenant. ECF No. 12. In that
filing, InComm continued to oppose dismissal, arguing that
the sales addressed in the declaration “include[d] pre-
printed lottery tickets that did not have lottery numbers
preprinted on them prior to the time of purchase.” ECF No.
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INTERACTIVE COMMUNICATIONS INTERNATIONAL, INC. v.
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13-1 at 5. No specific product was identified. Blackhawk
subsequently requested by email InComm “provide a sam-
ple of said lottery ticket and proof of its sale.” ECF No. 14
at 24. InComm responded that it “acted as a transaction
processor in the 2022-2024 timeframe for a lottery game
product referred to as ‘Scratch & Scan’ . . . where lottery
numbers were not preprinted on the lottery ticket.” Id. In
its sur-sur-reply,1 Blackhawk states that “[t]o remove any
conceivable doubt, Blackhawk further covenants that it
will not sue InComm, under the ’135 Patent, for sales of the
‘Scratch & Scan’ product from 2022 to 2024.” Id. at 16.
II.
To establish Article III standing, an appellant must
have “(1) suffered an injury in fact, (2) that is fairly trace-
able to the challenged conduct of the defendant, and (3)
that is likely to be redressed by a favorable judicial deci-
sion.” Spokeo, Inc. v. Robins, 578 U.S. 330, 338 (2016); see
Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171–72
(Fed. Cir. 2017). An injury in fact is “a legally protected
interest which is (a) concrete and particularized” and “(b)
actual or imminent, not conjectural or hypothetical.”
Lujan v. Defs. of Wildlife, 504 U.S. 555, 560 (1992) (cleaned
up). An injury is concrete if it is “real” rather than “ab-
stract,” Spokeo, 578 U.S. at 340, and particularized if it “af-
fect[s] the plaintiff in a personal and individual way,”
Lujan, 504 U.S. at 560 n.1. This “personal inter-
est . . . must continue through [the case’s] existence,” oth-
erwise the case will be dismissed as moot. Momenta
Pharms., Inc. v. Bristol-Myers Squib Co., 915 F.3d 764, 770
(Fed. Cir. 2019) (cleaned up).
1 Because this filing responds to new arguments
raised in a court-directed filing and InComm had the op-
portunity to respond to the filing, we will consider it.
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InComm argues that it is injured by the Board’s deci-
sion rejecting its invalidity challenges because it is subject
to potential infringement liability. But the broad allega-
tions in Mr. Gruenhut’s declaration are insufficient to es-
tablish such harm, and, in any event, Blackhawk’s
covenants not to sue encompass all past potential infring-
ing activity identified by InComm. Blackhawk promised
not to sue for sales of pre-printed lottery tickets that oc-
curred before the end of March 2025 that had lottery num-
bers preprinted on them prior to the time of purchase as
well as sales of the Scratch & Scan product from 2022 to
2024—the only product identified by InComm not covered
under the initial covenant because it did not have numbers
preprinted on them prior to purchase.
InComm could have attempted to “establish that it has
concrete plans for future activity that creates a substantial
risk of future infringement or likely cause the patentee to
assert a claim of infringement.” JTEKT Corp. v. GKN
Auto. LTD., 898 F.3d 1217, 1221 (Fed. Cir. 2018). But de-
spite having multiple opportunities, InComm has failed to
come forward with such activity. In fact, InComm’s re-
sponse in opposition to dismissal makes clear that it “no
longer sold [pre-printed lottery ticket products] as of ap-
proximately the end of March 2025” and makes no sugges-
tion of any plans to do so in the future. ECF No. 10 at 15.
Under such circumstances, InComm has not shown stand-
ing based on potential infringement activity.
InComm’s remaining contentions in support of its
standing are even less persuasive. It claims a concrete and
particularized injury because it “faces a continuing legal
threat from Blackhawk” based on allegations that InComm
“stole Blackhawk’s intellectual property that is the subject
matter of the [’]135 Patent.” ECF No. 10 at 4. InComm
relies on the fact that Blackhawk previously filed a civil
action seeking correction of inventorship and ownership of
two patents assigned to one of InComm’s affiliates, e2In-
teractive, Inc., that was dismissed for lack of jurisdiction in
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2022 without prejudice to refiling. But it is undisputed
that InComm does not own those patents, and InComm
provides no other basis to conclude that it faces an injury-
in-fact by the possible threat of refiling such a suit.
Finally, InComm alleges injury based on alleged collat-
eral and statutory estoppel effects resulting from the
Board’s decision, asserting that certain determinations
“could impact InComm’s ability to challenge any patent in
the family.” ECF No. 10 at 17. But we have repeatedly
rejected invocation of the estoppel provision or potential for
collateral consequences of a decision as a sufficient basis,
on its own, to confer standing. See, e.g., Best Med. Int’l, Inc.
v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (reject-
ing collateral estoppel argument); AVX Corp. v. Presidio
Components, Inc., 923 F.3d 1357, 1362–63 (Fed. Cir. 2019)
(statutory estoppel). We, likewise, do so here.
Accordingly,
IT IS ORDERED THAT:
(1) Blackhawk’s motion to file the sur-sur-reply in-
cluded with ECF No. 14 is granted.
(2) Blackhawk’s motion to dismiss is granted, and the
appeal is dismissed.
(3) Each side shall bear its own costs.
September 26, 2025
Date
FOR THE COURT
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