iA panel of the Federal Circuit on Wednesday dismissed an appeal from a Patent Trial and Appeal Board decision, finding that the appellant, a public interest group, had failed to allege facts sufficient to demonstrate that it had suffered an injury in fact necessary to confer Article III standing.
In 2006, Consumer Watchdog, a non-profit consumer advocacy group, had requested inter partes reexamination of U.S. Patent No. 7,029,913, which is directed to human embryonic stem cell cultures. The owner of the ‘913 patent is Wisconsin Alumni Research Federation (WARF). The USPTO granted theinter partes reexamination, and the PTAB affirmed the patentability of claims 1-4 of the ‘913 patent.
Consumer Watchdog appealed the PTAB decision. On appeal, the Federal Circuit considered whether Consumer Watchdog had established an injury in fact sufficient to confer Article III standing. The court noted that, “while Article III standing is not necessarily a requirement to appear before an administrative agency [such as the USPTO], once a party seeks review in a federal court, the constitutional requirement that it have standing kicks in.” Even where a statute grants to a party a procedural right, such as appeal from an administrative decision, the requirement of injury in fact remains.
The Federal Circuit found that Consumer Watchdog had not identified any injury from the PTAB decision other than a denial of the outcome that Consumer Watchdog desired in the reexamination. The only injury alleged by Consumer Watchdog was that WARF’s assertion of the patent placed a severe burden on taxpayer-funded research. The court specifically noted that Consumer Watchdog had not alleged any involvement in stem cell research, such that it might face the threat of an infringement claim; nor was it a prospective licensee of the patent. Because Consumer Watchdog had alleged no connection to the technology or patent at issue, it could not demonstrate the existence of the requisite injury in fact resulting from the PTAB decision.
The court considered the possibility of injury in fact resulting from the estoppel provisions of the reexamination statute, which limit the arguments that may subsequently be brought by a party that has participated in an inter partes reexamination. The court found that, because Consumer Watchdog had not alleged facts that would indicate that it may be involved in a later infringement suit or reexamination relating to the ‘913 patent, it had no concrete injury flowing from the estoppel provisions. The court elected to “leave[] it to future panels to decide whether, under other circumstances, the preclusive effect of the estoppel provisions could constitute an injury in fact.”
The Federal Circuit’s decision is likely to have a chilling effect on appeals by public interest groups seeking to invalidate patent claims. The case does, however, provide some guidance to groups in similar situations. For one, such groups should consider whether they will have standing to appeal a PTAB decision prior to initiating a reexamination or a post-grant review proceeding. Such groups should also take care to allege facts sufficient to support a finding that they have suffered an injury in fact.
The opinion is available here: Consumer Watchdog v. Wisconsin Alumni Research Foundation
