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Federal Circuit sides with U.S. PTO in appeal over stem cell patent

By Jessica M. Karmasek | Aug 18, 2014

WASHINGTON (Legal Newsline) - A federal appeals court has ruled against a consumer group challenging a patent on stem cells.

The U.S. Court of Appeals for the Federal Circuit, in its June 4 decision, dismissed an appeal by Consumer Watchdog, a not-for-profit public charity.

The group appealed to the Federal Circuit a decision by the U.S. Patent and Trademark Office affirming the patentability of the Wisconsin Alumni Research Foundation’s U.S. Patent No. 7,029,913, as amended during reexamination.

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 wanted the Federal Circuit, which handles all U.S. patent appeals, to rule that each of the ‘913 patent’s claims is invalid.

But the court, in its eight-page order of dismissal, said Consumer Watchdog hasn’t alleged any involvement in research or commercial activities involving human embryonic stem cells.

“Nor has it alleged that it is an actual or prospective competitor of WARF or licensee of the ‘913 patent,” Circuit Judge Randall Rader wrote for a three-judge panel.

Aside from its procedural right to appeal, Rader said the group has only alleged a “general grievance” concerning the patent.

“While Consumer Watchdog is sharply opposed to the (PTO) Board’s decision and the existence of the ‘913 patent, that is not enough to make this dispute justiciable,” the judge wrote for the court.

“Because Consumer Watchdog 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, it lacks standing to appeal the decision affirming the patentability of the amended claims.”

Rader said the panel considered the group’s remaining arguments, but found them “unpersuasive.”

In a January filing with the Federal Circuit, the PTO argued that Consumer Watchdog didn’t have standing to appeal its review decision.

“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,” attorneys for the agency wrote in a 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.”

The group 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,” Consumer Watchdog, represented by the Public Patent Foundation, explained in its 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.

Consumer Watchdog could not immediately be reached for comment on the court’s ruling.

From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.

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