Third Party Challengers Must Establish Injury in Fact to Appeal PTAB Decisions: Federal Circuit | Practical Law

Third Party Challengers Must Establish Injury in Fact to Appeal PTAB Decisions: Federal Circuit | Practical Law

In Consumer Watchdog v. Wisconsin Alumni Research Foundation, the US Court of Appeals for the Federal Circuit dismissed an appeal of a Patent Trial and Appeal Board (PTAB) decision in an inter partes reexamination because Consumer Watchdog did not establish an injury in fact sufficient to confer Article III standing.

Third Party Challengers Must Establish Injury in Fact to Appeal PTAB Decisions: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 05 Jun 2014 • USA (National/Federal)
In Consumer Watchdog v. Wisconsin Alumni Research Foundation, the US Court of Appeals for the Federal Circuit dismissed an appeal of a Patent Trial and Appeal Board (PTAB) decision in an inter partes reexamination because Consumer Watchdog did not establish an injury in fact sufficient to confer Article III standing.
On June 4, 2014, in Consumer Watchdog v. Wisconsin Alumni Research Foundation, the US Court of Appeals for the Federal Circuit dismissed Consumer Watchdog's appeal from a decision of the Patent Trial and Appeal Board (PTAB) affirming the patentability of Wisconsin Alumni Research Foundation's (WARF) patent directed to human embryonic stem cell cultures (No. 2013–1377, (Fed. Cir. June 4, 2014)). The Federal Circuit found that Consumer Watchdog did not have Article III standing to appeal the PTAB's decision because it did not identify any injury in fact.
In 2006, Consumer Watchdog requested inter partes reexamination of claims 1-4 of WARF's patent. The PTAB affirmed the patentability of the challenged claims, and Consumer Watchdog appealed.
On appeal, the Federal Circuit explained that under Article III of the US Constitution, a party invoking federal jurisdiction must show that:
  • It has suffered an injury in fact that is both:
    • concrete and particularized; and
    • actual or imminent (as opposed to conjectural or hypothetical).
  • The injury is fairly traceable to the challenged action.
  • It is likely, rather than merely speculative, that a favorable judicial decision will redress the injury.
The Federal Circuit explained that even though Article III standing may not be required to appear before an administrative agency such as the PTAB, the constitutional standing requirements apply once a party seeks review of the agency's decision in a federal court. The court also explained that where Congress grants a procedural right to appeal an agency decision, certain standing requirements may be relaxed. The court emphasized, however, that the Article III standing requirement of an injury in fact cannot be removed by statute.
The Federal Circuit found that Consumer Watchdog did not have standing under Article III because it had not suffered an injury in fact. The court rejected Consumer Watchdog's argument that it was injured by the PTAB's denial of its request to cancel WARF's patent claims because:
  • The statutory provisions governing inter partes reexamination (35 U.S.C. § 311(a) and 314(b)) allow a third party to request reexamination but do not guarantee a favorable outcome.
  • The statutory right to appeal an inter partes reexamination decision under 35 U.S.C. § 315(b) does not eliminate the Article III standing requirements in federal court.
  • The estoppel provisions of 35 U.S.C. § 317 do not constitute an injury in fact because Consumer Watchdog is not engaged in any activity that could form the basis for an infringement claim.
Although the Federal Circuit left open the issue of whether the preclusive effect of the estoppel provisions could constitute injury in fact in another case, the court emphasized that Consumer Watchdog's general grievance concerning WARF's patent was insufficient to confer standing.