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.
As a reminder, old 35 U.S.C. § 315 (b)(1) recites:
(b) THIRD-PARTY REQUESTER.— A third-party requester—
- (1) may appeal under the provisions of section 134 , and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent;
During oral argument on Tuesday, the Court wondered whether there was a necessary injury to CW as a public interest group. While the estoppel that would flow from a failed challenge at the PTAB was explored, the Court did not seem to think estoppel against a non-competitive challenger was a true injury. Throughout the argument the Court repeatedly raised the issue as to the USPTO’s role in the dispute, and their palpable discomfort with the lack of an appearance by the agency on such a significant issue.
The agency’s absence was likely due to the nature of the appeal. In other words, the PTO is not typically defending patentability decisions, and is uncomfortable in that role. Given that participation in such inter partes appeals is discretionary, and the standing issue was raised after briefing was completed, the absence of the agency is not surprising. Still, it would seem that some input from the agency is necessary before the Court rules. As such, late Wednesday, the CAFC issued an Order (here) seeking input from the USPTO and U.S. government on the PTAB standing issue.
If standing were not found in such scenarios, the decision is unlikely to have significant impact on CBM or IPR proceedings. This is because CBM challengers must have standing to begin with (sued or charged with infringement), and the vast majority of IPRs are pursued by petitioners as an alternative to litigation. Still, there is a growing volume of IPRs from public interest, anti-troll, type organizations. Further, the Bio/Pharma community, the most likely targets of future PGR petitions (due to the availability of 101 and 112 grounds) are likely to watch this dispute very closely. (no amicus briefing is expected at present)