Federal Circuit No. 2013-1377

The Federal Circuit dismissed an appeal by Consumer Watchdog from a decision of the Patent Trial and Appeal Board affirming the patentability of WARF's embryonic stem cell patent, because Consumer Watchdog had failed to establish an injury sufficient to confer Article III standing.

WARF is the assignee of U.S. Patent No. 7,029,913, relating to an in vitro cell culture of human embryonic stem cells. Consumer Watchdog, a non-profit, progressive organization advocating for taxpayer and consumer interests, initiated an inter partes reexamination of the ‘913 patent. Unsuccessful in the reexamination, Consumer Watchdog appealed the Board’s decision to the Federal Circuit.

The Federal Circuit stated that although the statute provides the losing party in reexamination proceedings the right to appeal, access to the federal court is limited by Article III of the Constitution to disputes seeking to redress or prevent actual or imminently threatened injury. The court recognized that Consumer Watchdog did not allege any involvement in research or commercial activities involving human embryonic stem cells, that it was an actual or prospective competitor or licensee of WARF, or that it engaged in any activity that would give rise to a possible infringement suit. Merely alleging that the '913 patent has put a severe burden on taxpayer funded research in the State of California and completely preempts all uses of human embryonic stem cells, according to the court, was not sufficient to meet the “injury” requirements of Article III. In dismissing the appeal, the court concluded that Consumer Watchdog lacks standing because it 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.

The decision would deprive public interest groups, nonprofits, and other non-practicing organizations of full litigation rights to challenge the validity of a patent in cases where the challenging party cannot meet the Article III requirement of an “injury in fact”. In addition, although this case arose from an inter partes reexamination proceeding, the ruling would similarly apply to any Federal Circuit appeal of inter partes review and post-grant review proceedings under the AIA.

Erkang Ai