Jessica M. Karmasek Jan. 31, 2014, 4:00pm

WASHINGTON (Legal Newsline) -- The U.S. Patent and Trademark Office, in a federal court filing this month, argues that a consumer group challenging a patent on stem cells does not have standing to appeal the agency's review decision.

"Except at the behest of a party with a concrete and particularized interest in the question presented, neither this Court nor any other Article III tribunal has the power to render judgment," attorneys for the agency wrote in a Jan. 17 brief filed in the U.S. Court of Appeals for the Federal Circuit.

Consumer Watchdog, a not-for-profit public charity, is appealing a decision by the PTO affirming the patentability of the Wisconsin Alumni Research Foundation's '913 patent, a patent on Primate Embryonic Stem Cells, as amended during reexamination.

In its opening brief filed with the Federal Circuit in July, Consumer Watchdog argues that WARF's "broad and aggressive" assertion of the '913 patent has put a "severe burden" on taxpayer-funded research in California, where the group is based.

Consumer Watchdog said it is concerned the patent gives WARF the potential to "completely preempt" all uses of hES (human embryonic stem) cells, including particularly for scientific and medical research.

The group wants the Federal Circuit, which handles all U.S. patent appeals, to rule that each of the '913 patent's claims is invalid.

But the PTO argues that the group does not have any "concrete or particularized interest" in the patent.

"Consumer Watchdog does not suggest that it is an actual or prospective competitor or licensee of the Wisconsin Alumni Research Foundation, nor does it assert any concrete interest in the invention claimed in the '913 patent," its attorneys wrote in the 17-page brief.

"The fact that Congress has created a procedural right to appeal an adverse PTO decision does not by itself confer Article III standing.

"The appeal should therefore be dismissed for lack of jurisdiction."

In its response filed Monday, Consumer Watchdog contends it does, indeed, have a concrete interest -- in the PTO's decision.

"The government action that CW seeks to challenge here is not, as the Government insinuates, the patenting of a claimed invention, which applies equally to all people in the United States save the patentee," the group, represented by the Public Patent Foundation, explained in its 16-page response.

"Instead, it is the PTO's specific action of, after granting CW's request for reexamination of the '913 patent, issuing a decision with which CW was dissatisfied in the reexamination, an action that applies uniquely to CW."

Consumer Watchdog first filed its patent challenge in 2006 through a process called reexamination, in which third parties ask the PTO to revoke a patent that it previously issued.

Initially, the patent was rejected by the PTO. However, an appeal from WARF caused the PTO to reverse its conclusion.

The group -- despite WARF narrowing its claim and announcing more favorable licensing terms for the patent -- still believed the patent to be invalid and asked the Federal Circuit to reinstate the office's initial decision to cancel the patent.

Joining the challenge from the beginning was Dr. Jeanne Loring, director of the Center for Regenerative Medicine at the Scripps Institute in La Jolla, Calif.

"This is an important battle," she said in July.

"Human embryonic stem cells hold great promise for advancing human health, and no one has the ethical right to own them."

In June, the U.S. Supreme Court ruled in Association for Molecular Pathology et al. v. Myriad Genetics Inc. et al. that human genes can't be patented.

From Legal Newsline: Reach Jessica Karmasek by email at

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