06/04/14

Consumer Watchdog v. WARF: Consumer Rights Organization Lacks Standing to Appeal Inter Partes Reexam


Category: Post-Grant Proceedings  
 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleConsumer Watchdog v. Wis. Alumni Research Found., No. 2013-1377 (Fed. Cir. June 4, 2014).
Issue[Attempting to establish an injury in fact sufficient to confer Article III standing,] Consumer Watchdog relies on the Board’s denial of Consumer Watchdog’s requested administrative action—namely, the Board’s refusal to cancel claims 1–4 of the ’913 patent [in an inter partes reexamination].
Consumer Watchdog at *5 (citations omitted).
HoldingBecause Consumer Watchdog has not identified a particularized, concrete interest in the patentability of the ’913 patent, or any injury in fact flowing from the Board’s decision, it lacks standing to appeal the decision affirming the patentability of the amended claims.
Consumer Watchdog at *8.
 
 
 
Editor's Notes
For further insight, check out the Audio Brief of oral arguments in Consumer Watchdog v. Wis. Alumni Research Found. by clicking here.
 

 
Procedural HistoryIn 2006, Consumer Watchdog requested inter partes reexamination of the ’913 patent, which is owned by Appellee Wisconsin Alumni Research Foundation (WARF).[…] Indeed, Consumer Watchdog states that it filed the reexamination request because it was concerned that the ’913 patent allowed WARF to completely preempt all uses of human embryonic stem cells, particularly those for scientific and medical research. […] Consumer Watchdog was ultimately unsuccessful in the reexamination, however, and filed the present appeal.
Consumer Watchdog at *2-3.
 
 
 
Legal Reasoning (Prost, CJ, Rader, Hughes)
Background
Legal Standard: Article III standing
The present appeal concerns Article III standing. To meet the constitutional minimum for standing, the party seeking to invoke federal jurisdiction must satisfy three requirements. Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992). First, the party 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). Id. at 560–61. Second, it must show that the injury is fairly traceable to the challenged action. Id. at 560. Third, the party must show that it is likely, rather than merely speculative, that a favorable judicial decision will redress the injury. Id. at 561.
Consumer Watchdog at *4.
[T]he party invoking federal jurisdiction must have “a personal stake in the outcome.” Lyons, 461 U.S. at 101. The personal stake in the outcome—and injury in fact—generally will be easier to show where the party seeking to invoke the federal courts’ jurisdiction is the object of the complained of action (or inaction). Lujan, 504 U.S. at 561. By contrast, where a party is alleging an injury arising from the government’s allegedly unlawful action or inaction pertaining to a third party, injury in fact is much more difficult to prove. Id. at 561–62.
Id. at *5.
Analysis
No InjuryConsumer Watchdog does not identify any alleged injury aside from the Board denying Consumer Watchdog the particular outcome it desired in the reexamination, i.e., canceling the claims of the ’913 patent. [...] Consumer Watchdog does not allege that it is engaged in any activity involving human embryonic stem cells that could form the basis for an infringement claim. It does not allege that it intends to engage in such activity. Nor does it allege that it is an actual or prospective licensee, or that it has any other connection to the ’913 patent or the claimed subject matter. Instead, Consumer Watchdog relies on the Board’s denial of Consumer Watchdog’s requested administrative action—namely, the Board’s refusal to cancel claims 1–4 of the ’913 patent. That denial, however, is insufficient to confer standing.
Consumer Watchdog at *5 (internal citations omitted).
No Invasion of Legal Right[T]he Board’s disagreement with Consumer Watchdog did not invade any legal right conferred by the inter partes reexamination statute. The statute at issue here allowed any third party to request reexamination, and, where granted, allowed the third party to participate. 35 U.S.C. §§ 311(a), 314(b)(2) (2006). The statute did not guarantee a particular outcome favorable to the requester. See generally 35 U.S.C. §§ 311–318 (2006). Consequently, the Board’s denial of Consumer Watchdog’s request did not invade any legal right conferred upon Consumer Watchdog.
Id. at *6.
Statutory Right to Appeal does not Negate Article III Standing RequirementNor is it enough that the inter partes reexamination statute allows a third party requester to appeal decisions favorable to patentability. 35 U.S.C. § 315(b). A statutory grant of a procedural right, e.g., right to appeal, does not eliminate the requirements of Article III. […] To be clear, a statutory grant of a procedural right may relax the requirements of immediacy and redressability, and eliminate any prudential limitations, […], which distinguishes the present inquiry from that governing a declaratory judgment action. But the statutory grant of a procedural right does not eliminate the requirement that Consumer Watchdog have a particularized, concrete stake in the outcome of the reexamination. […]
Id. at *6-7 (some internal citations omitted).
Estoppel Does Not Amount to InjuryThe estoppel provisions contained within the inter partes reexamination statute likewise do not constitute an injury in fact for Article III purposes. 35 U.S.C. § 317(a), (b). Consumer Watchdog is not engaged in any activity that would give rise to a possible infringement suit. Nor does Consumer Watchdog provide any indication that it would file another request seeking to cancel claims at the Patent Office. In any event, as Consumer Watchdog only has a general grievance against the ’913 patent, the “conjectural or hypothetical” nature of any injury flowing from the estoppel provisions is insufficient to confer standing upon Consumer Watchdog.
Id. at *7.
Conclusion
Consumer Watchdog’s appeal is dismissed.
Consumer Watchdog at *8.
 
 
 
 
 
 
 
 
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