Keywords: right of appeal, USPTO, challenged patent

In an appeal from a decision in an inter partes reexamination before the US Patent & Trademark Office (USPTO), the US Court of Appeals for the Federal Circuit has ruled that the challenger must show some injury-in-fact to have Article III standing at the Federal Circuit. Despite a statutory right of appeal from decisions upholding claims of the challenged patent, the Federal Circuit held that the USPTO's decision, by itself, did not create a sufficient injury-in-fact. The court dismissed the appeal for lack of jurisdiction.

In Consumer Watchdog,1 the Federal Circuit addressed a case in which the challenger in an administrative procedure did not have a clear stake in the outcome of the proceeding, such as an actual or prospective license or potentially infringing activity. The statutory right to request inter partes reexamination gave Consumer Watchdog (the appellant and the challenger before the USPTO) a right to initiate and participate in the process for challenging patents, but it "did not guarantee a particular favorable outcome." By following the procedure for inter partes reexamination, the USPTO gave Consumer Watchdog everything it had a right to receive under the statute, and Consumer Watchdog could show no injury resulting from the USPTO's decision. The Federal Circuit held that the statutory right of appeal granted by 35 U.S.C. § 315(b)2 was nothing but a procedural right, and that Congress cannot grant the federal courts jurisdiction where Article III of the Constitution does not. The statutory right of appeal was therefore insufficient to give the Court of Appeals jurisdiction.

This decision, while directed to the former inter partes reexamination procedure, will likely still apply to appeals from inter partes and post-grant review proceedings that replaced it. In any case where there is no co-pending litigation, challengers will need to be prepared to show injury-in-fact if they seek to appeal unfavorable decisions from the Patent Trial and Appeal Board under 35 U.S.C. §§ 319 and 329.

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Originally published 12 June 2014


1 Consumer Watchdog v. Wisconsin Alumni Research Foundation, Case No. 2013-1377 (Fed. Cir. June 4, 2014).

2 The decision applies to 35 U.S.C. § 315(b), as in effect prior to September 16, 2012.

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