Ironsource Ltd. v. Digital Turbine, Inc.

• Court: Court of Appeals for the Federal Circuit
• Decided: April 7, 2026
• Docket: 24-1831
• Status: Published

Opinion

Case: 24-1831 Document: 63 Page: 1 Filed: 04/07/2026

United States Court of Appeals for the Federal Circuit ______________________

IRONSOURCE LTD., Appellant

v.

DIGITAL TURBINE, INC., Appellee ______________________

2024-1831 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. PGR2022- 00053. ______________________

Decided: April 7, 2026 ______________________

PAUL D. ACKERMAN, Acknowledge Ip P.C., Syosset, NY, argued for appellant. Also represented by GARY ABELEV, ARMIN GHIAM, Hunton Andrews Kurth LLP, New York, NY; MAYA M. ECKSTEIN, Richmond, VA; GREGORY LAWRENCE PORTER, Houston, TX.

TODD RICHARD GREGORIAN, Fenwick & West LLP, San Francisco, CA, argued for appellee. Also represented by JONATHAN G. TAMIMI, Seattle, WA; DANIEL BROWNSTONE, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC, New York, NY. ______________________ Case: 24-1831 Document: 63 Page: 2 Filed: 04/07/2026

Before MOORE, Chief Judge, LOURIE and REYNA, Circuit Judges. MOORE, Chief Judge. ironSource Ltd. (ironSource) appeals a post-grant re- view (PGR) final written decision from the Patent Trial and Appeal Board (Board) granting Digital Turbine, Inc.’s (DT) Revised Motion to Amend proposing substitute claims 23– 37 in U.S. Patent No. 11,157,256. Because ironSource fails to establish an injury in fact sufficient to confer standing to appeal, we dismiss. BACKGROUND DT owns the ’256 patent, which discloses downloading and installing mobile device applications in the back- ground instead of directing a user to an application store. ’256 patent at 1:52–2:5. ironSource petitioned the Board for PGR of original claims 1–22 of the ’256 patent, asserting various grounds under 35 U.S.C. §§ 101, 102, and 103. J.A. 95–198. After the Board instituted PGR, DT filed a contingent motion to amend with proposed claims which the Board subsequently indicated in its preliminary guid- ance were unpatentable. J.A. 361–403; J.A. 497–520. DT filed its Revised Motion to Amend, proposing different sub- stitute claims 23–37. J.A. 571–608. Substitute claim 23, which replaces original independent claim 1, is representa- tive: 23.1 (Substitute for claim 1) A network-con- nected device configured for running soft- ware applications, comprising:

1 Changes from claim 1 of the ’256 patent, including added limitations [h] and [i], are represented here as de- picted in the Joint Appendix. J.A. 600–01. Similar limita- tions are included in substitute claims 31 and 37, which Case: 24-1831 Document: 63 Page: 3 Filed: 04/07/2026

IRONSOURCE LTD. v. DIGITAL TURBINE, INC. 3

[a] a network interface configured for com- municating over a network; [b] at least one non-transitory computer readable storage medium storing instruc- tions; and [c] at least one processor associated with said network interface and said storage medium, configured for executing said in- structions to: [d] identify that a link for installation of a first software application is selected by user interaction with a second software ap- plication running on said device, the link being embedded in content displayed on said device by the second software applica- tion; [e] in response to said identifying, deter- mine whether an installation client for downloading and installing applications on said device is available on said device, said installation client comprising a third soft- ware application; [f] responsive to a determination that the when said installation client is available on said device: [g] invoke, without exiting said second soft- ware application, said installation client for downloading and installing applications

replace corresponding original independent claims 14 and 21, respectively. J.A. 603–07. Case: 24-1831 Document: 63 Page: 4 Filed: 04/07/2026

on said device to run in the background on said device; [h] said installation client checking whether said second software application is eligible to use capabilities of the installa- tion client, wherein said installation client identifies said second software application as eligible responsive to said second soft- ware application having been provided with a unique eligibility token by a server as a result of said second software applica- tion having registered with the server; [i] said installation client querying an ad- dress repository for a network address of an installation file for said first software ap- plication and receiving the network ad- dress in response to the query; [j] instruct said invoked installation client to automatically download [[an]] said in- stallation file of said first software applica- tion to said device over said network using said network interface in the background on said device, without directing said user interaction to an app store; and [k] using said downloaded installation file, install said first software application on said device in the background on said de- vice while maintaining a user experience of interaction with said second software ap- plication in the foreground; and [l] responsive to a determination that the when said installation client is unavailable on said device, redirect said device to an app store for downloading and installing Case: 24-1831 Document: 63 Page: 5 Filed: 04/07/2026

IRONSOURCE LTD. v. DIGITAL TURBINE, INC. 5

said first software application on said de- vice. J.A. 600–01. The Board granted the Revised Motion to Amend be- cause ironSource failed to show, by preponderant evidence, the proposed substitute claims were unpatentable or pa- tent ineligible. IronSource Ltd. v. Digital Turbine Inc., No. PGR2022–00053, 2024 WL 1098132, at *24 (P.T.A.B. Mar. 12, 2024). The Board also determined original claims 1–22 were unpatentable in light of its decision in a previous PGR holding unpatentable all challenged claims of the par- ent patent, U.S. Patent No. 10,782,951. Id. at *4, *7; Iron- Source Ltd. v. Digital Turbine Inc., No. PGR2021–00096, 2023 WL 36221, at *40 (P.T.A.B. Jan. 4, 2023). ironSource appeals. We have jurisdiction to review final decisions of the Board pursuant to 28 U.S.C. § 1295(a)(4)(A). DISCUSSION DT argues ironSource lacks Article III standing to ap- peal. Appellee Br. 26–33. Article III standing is a thresh- old jurisdictional issue that must be addressed before a court can reach the merits of an appeal. Abraxis Biosci- ence, Inc. v. Navinta LLC, 625 F.3d 1359, 1363 (Fed. Cir. 2010) (citing Lujan v. Defs. of Wildlife, 504 U.S. 555, 560– 61 (1992)). Although a party need not establish Article III standing to file a PGR petition or obtain a Board decision, a party challenging the validity of a patent must establish Article III standing once it seeks review in this Court. Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, 85 F.4th 1377, 1380 (Fed. Cir. 2023). As the party seeking review, ironSource bears the bur- den to prove it has standing. Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171 (Fed. Cir. 2017). We accept as true an appellant’s material representations of fact for pur- poses of assessing standing. Gen. Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1342 (Fed. Cir. 2020). An Case: 24-1831 Document: 63 Page: 6 Filed: 04/07/2026

appellant must have standing at the time the appeal is filed. Hollingsworth v. Perry, 570 U.S. 693, 705 (2013). To establish standing, an appellant must have “(1) suf- fered 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, Inc. v. Robins, 578 U.S. 330, 338 (2016). To establish an injury in fact, an appellant must show it has “suffered ‘an invasion of a legally protected interest’ that is ‘concrete and particularized’ and ‘actual or imminent, not conjectural or hypothetical.’” Id. at 339 (quoting Lujan, 504 U.S. at 560). Where an appellant who is challenging the validity of a pa- tent relies on potential infringement liability as a basis for injury in fact, “it must 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). ironSource argues it has met its burden to establish an injury in fact, based on the potential infringement liability suggested by DT’s “veiled threats” of infringement— namely, that DT’s intellectual property covers certain “Click to Install” (C2I) features of ironSource’s now-discon- tinued Aura product. Appellant Br. 1–4. To establish standing, ironSource relies on the declara- tion of its Senior Director of Strategic Partnership Manage- ment, Lee London. J.A. 4379–90 (London Decl.). Mr. London testified that, in early 2021, he learned from ironSource’s actual and potential customers that DT al- leged to have one or more patents covering the C2I fea- tures. J.A. 4381–82 ¶ 4. Mr. London also testified that, because of these allegations, ironSource was compelled to modify Aura’s C2I features and make business concessions, such as additional indemnifications to its customers, to mitigate the risk of potential litigation by DT. J.A. 4381–82 ¶ 4. The declaration shows that in August Case: 24-1831 Document: 63 Page: 7 Filed: 04/07/2026

IRONSOURCE LTD. v. DIGITAL TURBINE, INC. 7

2022, ironSource suspended the Aura product with modi- fied C2I features. J.A. 4387 ¶ 23. Mr. London further tes- tified that ironSource desires to reintroduce the C2I features but is prevented from doing so by the Board’s hold- ing that the substitute claims are patentable. J.A. 4389 ¶ 29. Mr. London’s declaration is insufficient to establish an injury in fact because, although it establishes that iron- Source previously developed and released a product, it fails to demonstrate concrete plans to reintroduce this product with features that are implicated by the substitute claims at issue. JTEKT Corp., 898 F.3d at 1221. The London dec- laration alleges DT made veiled threats that ironSource’s product infringed DT’s patents, which ironSource under- stood to refer to the ’951 patent, and later the continuation, the ’256 patent. J.A. 4382–83 ¶ 8. Mr. London then al- leges, with no analysis, that the later-issued ’256 patent claims are “substantially identical” to those of the ’951 pa- tent. Id. Focusing on the ’256 patent’s original independ- ent claims which the Board held unpatentable, ironSource argues the ’256 patent is substantially similar to the ’951 patent but with broader claims. Appellant Br. 4, 7. But these independent claims are not the claims at issue. It is undisputed that the claims at issue have two limitations [h] and [i] which narrowed the claims. J.A. 601. ironSource presents neither argument nor evidence that links the ear- lier infringement allegations related to the ’951 patent with these narrower claims of the ’256 patent. The London declaration is silent as to these limitations and their rela- tionship to the C2I features ironSource seeks to add to its products. J.A. 4379–90. At oral argument, ironSource argued for the first time that “oblique references” to the claims at issue are suffi- cient under General Electric Company v. Raytheon Tech- nologies Corporation, 983 F.3d 1334 (Fed. Cir. 2020). Oral Arg. at 30:59–31:07. In General Electric, we held the ap- pellant had standing because its declarations plausibly Case: 24-1831 Document: 63 Page: 8 Filed: 04/07/2026

established its preferred engine design substantially risks infringing the patent at issue. 983 F.3d at 1342–43 (citing declarations tying appellant’s engine design to claimed fea- tures). Though the appellant’s declarations “only obliquely allude[d] to how its preferred engine design m[et] the claimed limitations,” they still linked the appellant’s poten- tial product to the claim limitations. Id. The London Dec- laration fails to link the C2I features in ironSource’s Aura product to the substitute claims. J.A. 4379–90. Because ironSource does not show how the C2I fea- tures are implicated by the substitute claims, which intro- duce two narrowing limitations and issued after DT’s alleged “veiled threats” of infringement, we conclude iron- Source has failed to show injury in fact based on potential infringement liability. CONCLUSION We have considered ironSource’s remaining arguments and find them unpersuasive. Because ironSource fails to establish an injury in fact sufficient to confer Article III standing, we dismiss the appeal for lack of jurisdiction. DISMISSED COSTS Costs to DT.