September 25, 2022

Volume XII, Number 268

Advertisement

September 23, 2022

Subscribe to Latest Legal News and Analysis

September 22, 2022

Subscribe to Latest Legal News and Analysis

Public Interest Petitioner Lacks Standing for Appeal from PTO Reexamination Proceeding - Patent and Trademark Office

Various administrative proceedings are now available through the U.S. Patent and Trademark Office (PTO) for members of the public wishing to challenge one or more claims of an issued patent, including adversarial proceedings in which the challenger participates as a party. While those seeking to cancel a patent through suchinter partes proceedings may ordinarily appeal from a PTO decision upholding the claims, the Federal Circuit held this week that not all such disappointed petitioners are entitled to judicial review.

 In Consumer Watchdog v. Wisconsin Alumni Research Foundation (WARF), the court addressed an appeal filed by a consumer advocacy group after an unsuccessful attempt to cancel claims to embryonic stem cell cultures via inter partes reexamination. Consumer Watchdog, a “not-for-profit public charity dedicated to providing a voice for taxpayers and consumers in special interest-dominated public discourse, government, and politics,” stated that it had initiated inter partes reexamination of WARF’s U.S. Patent 7,029,913 out of concern over the breadth of the ’913 patent and the perceived burden it imposed on taxpayer-funded research within California. When the PTO reaffirmed the challenged claims, Consumer Watchdog filed an appeal before the Federal Circuit as set forth under pre-AIA 35 U.S.C. § 315(b).

Although § 315(b) specified that a petitioner in an inter partes reexamination “may appeal . . . any final decision favorable to the patentability” of the challenged claims, the Federal Circuit held it could not entertain Consumer Watchdog’s appeal. The court held that even where a statute provides the right to appeal from an administrative decision, federal courts must observe the constitutional requirement for standing, which requires that the party seeking court action has suffered a concrete, personal harm. In other words, standing requires more than an abstract injury or general grievance. In this case, the court noted that Consumer Watchdog did not identify any injury beyond dissatisfaction with the outcome of reexamination, it does not conduct any research or activities at risk of infringing or in any way associated with the ’913 patent. Nor did Consumer Watchdog have any legal right to a favorable outcome before the PTO. Under those circumstances, the court held that a statutory, procedural right to appeal was insufficient to confer standing, and the appeal was dismissed.

Although Consumer Watchdog involved inter partes reexamination, a proceeding made obsolete by the AIA, its standing analysis will likely have broader reach. In particular, the post-grant proceedings established by the AIA to supplant inter partes reexamination, such as inter partes review and post-grant review, include analogous statutory appeal provisions. Accordingly, parties considering (or responding to) such an appeal should not overlook standing as a threshold issue going forward.

©2022 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume IV, Number 156
Advertisement
Advertisement
Advertisement
Advertisement

About this Author

Kevin P. Moran, Intellectual Property attorney, Michael Best, manufacturing industry legal counsel,
Partner

Clients look to Kevin for strategic counsel on the protection of their intellectual property, including acquisition of, enforcement of, and defense against United States and international patents.

His strong track record in these areas, paired with a technical background as a product engineer, give Kevin a unique perspective on the challenges facing developers of mechanical, electro-mechanical, and biomedical technologies.

Kevin has significant experience in the areas of fitness equipment, motorcycles, vehicle braking...

262-956-6510
Andrew Dufresne, intellectual property, attorney, Michael Best, law firm
Attorney

Andrew Dufresne is an attorney focusing his practice on intellectual property law. Dr. Dufresne has experience with patent prosecution, reexamination, and post-grant proceedings before the United States Patent and Trademark Office; patent litigation matters in federal court at the trial and appellate levels; and strategic counseling in other patent-related matters, including patentability and freedom-to-operate assessments.

608-283-0137
Advertisement
Advertisement
Advertisement