Article by Ashley M. Winkler, Summer Associate.

In Consumer Watchdog v. Wisconsin Alumni Research Foundation, No. 13-1377 (Fed. Cir. June 4, 2014), the Federal Circuit dismissed Consumer Watchdog's appeal of the Board's decision affirming the patentability of claims 1-4 of U.S. Patent No. 7,029,913 ("the '913 patent"), holding that Consumer Watchdog failed to establish an injury in fact necessary for Article III standing.

Consumer Watchdog requested inter partes reexamination of the '913 patent, which is owned by the Wisconsin Alumni Research Foundation ("WARF") and directed to human embryonic stem cell cultures.  Consumer Watchdog, a self-described not-for-profit public charity, stated that it filed the reexamination out of concern that the '913 patent allowed WARF to completely preempt all uses of human embryonic stem cells.  The reexamination resolved in favor of WARF, and Consumer Watchdog appealed.

"While Consumer Watchdog is sharply opposed to the Board's decision and the existence of the '913 patent, that is not enough to make this dispute justiciable." Slip op. at 8.

On appeal, the Federal Circuit held that Consumer Watchdog failed to allege an injury in fact sufficient to confer Article III standing for its appeal.  Specifically, the Court observed that Consumer Watchdog did not allege any activity involving human embryonic stem cells or any other connection to the '913 patent or its claimed subject matter.  Rather, the Court concluded, the only injury alleged by Consumer Watchdog was "the Board denying [it] the particular outcome it desired in the reexamination, i.e., canceling the claims of the '913 patent."  Slip op. at 5.  Acknowledging Congress's ability to create legal rights through statute, the Court nevertheless concluded that "the Board's disagreement with Consumer Watchdog did not invade any legal right conferred by the inter partes reexamination statute."  Id. at 6.  Rather, the Court explained, the inter partes reexamination statute allowed a third party to request reexamination, and where the request was granted, a right to participate, but did not guarantee a favorable outcome for the requestor.

The Federal Circuit rejected Consumer Watchdog's argument analogizing the inter partes reexamination statute to the Freedom of Information Act ("FOIA") and the Federal Election Campaign Act ("FECA").  According to the Court, both FOIA and FECA created substantive legal rights—access to certain government records—that, if denied, lead to a concrete and particularized injury in fact.  Here, the Court explained, Consumer Watchdog was not denied anything to which it was entitled since Consumer Watchdog was permitted to request reexamination and to participate once the PTO granted the request.

The Federal Circuit also held that the procedural right in 35 U.S.C. § 315(b), which allows a third-party requestor to appeal a Board's decision favorable to patentability, did not eliminate the requirement that Consumer Watchdog have a particularized, concrete stake in the outcome of the reexamination.  The Court did, however, clarify that the statutory grant of a procedural right may relax Article III's requirements of immediacy and redressability, and eliminate any prudential limitations, distinguishing its present inquiry from that governing a DJ action. 

Finally, the Court held that, in the case of Consumer Watchdog, the inter partes reexamination statute's estoppel provisions did not constitute an injury in fact for Article III purposes.  Leaving open the possibility of a different result in other circumstances, the Court concluded that since Consumer Watchdog was not engaged in any activity that could give rise to an infringement suit and had only "a general grievance against the '913 patent, the 'conjectural or hypothetical' nature of any injury flowing from the estoppel provisions was insufficient to confer standing upon Consumer Watchdog."  Id. at 7.

Accordingly, the Court held that because Consumer Watchdog failed to assert a particularized, concrete interest in the patentability of the '913 patent or an injury in fact flowing from the Board's decision, it dismissed the appeal for lack of Article III standing.

Judges: Prost, Rader (author), Hughes

[Appealed from Board]

This article previously appeared in Last Month at the Federal Circuit, July 2014.

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