• Subscribe

    Subscribe to the RSS feed Subscribe to the blogs's ATOM feed
    Add to your Google Home Page or Google Reader Add to your My Yahoo!
    Add to your My MSN Add to your My AOL
    Subscribe to the Comments RSS feed Add to your Bloglines
    Email Subscription

  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for December 5th, 2013

CAFC Requests USPTO/Gov’t Weigh In On Third Party Standing for Appeals From PTAB

Posted On: Dec. 5, 2013   By: Scott A. McKeown
PTAB-standingCAFC Considers Article III Injury Requirement for Dissatisfied Patent Challengers

Earlier this week, the CAFC heard oral arguments in Consumer Watchdog v. Wisconsin Alumni Research Foundation (Warf). Although seemingly a routine appeal from an inter partes patent reexamination, the Court took interest in the unique procedural posture of this case a few weeks before argument on the merits. Here, the challenged claims of the patent were confirmed as patentable by the USPTO and appealed by the challenger, Consumer Watchdog, to the CAFC. The CAFC ordered late briefing on the question of Article III standing for CW’s appeal. CW brief (here), WARF brief (here)

For simple folk like me, the question of standing would seem to have a relatively straight forward response. That is, appeal from a PTAB decision is provided, by statute (old 35 U.S.C. § 315 (b)(1), to any party dissatisfied with a decision of the PTAB. This appeal right was actually added in 2002 as the original inter partes reexamination passed in 1999 had no such right. Section 13106 of Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002). So, not only was standing conveyed by Congress, it was conveyed only after denying it in the first legislative go-round. (fact pattern seems rather persuasive to me)

While the CAFC was well aware of the statute, they seemed to be seeking more of an “injury” from the appellant to convey Article II standing, or some kind of indication in the legislative history that Congress intended to convey Article III standing. Read the rest of this entry »