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

Case: 25-1632 Document: 18 Page: 1 Filed: 09/26/2025

NOTE: This order is nonprecedential.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. ORDER Blackhawk Network, Inc. moves to dismiss this appeal for lack of standing. Interactive Communications Interna- tional, Inc. (InComm) opposes. Blackhawk replies.

Case: 25-1632 Document: 18 Page: 2 Filed: 09/26/2025

2 INTERACTIVE COMMUNICATIONS INTERNATIONAL, INC. v. BLACKHAWK NETWORK, INC.

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.

Case: 25-1632 Document: 18 Page: 3 Filed: 09/26/2025

INTERACTIVE COMMUNICATIONS INTERNATIONAL, INC. v. 3 BLACKHAWK NETWORK, INC.

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).

Case: 25-1632 Document: 18 Page: 4 Filed: 09/26/2025

4 INTERACTIVE COMMUNICATIONS INTERNATIONAL, INC. v. BLACKHAWK NETWORK, INC.

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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INTERACTIVE COMMUNICATIONS INTERNATIONAL, INC. v. 5 BLACKHAWK NETWORK, INC.

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. FOR THE COURT

September 26, 2025 Date

Footnotes

[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.