On June 4th, the Federal Circuit issued a decision regarding standing which raises issues for parties to consider in deciding whether to institute an Inter Partes Review (IPR), because it found that in some instances there is no right to appeal the Board’s IPR decision.
In Consumer Watchdog v. Wisconsin Alumni Research Foundation, third-party requester Consumer Watchdog sought IPR of a patent dealing with stem cells, believing that it put an innovative damper on research in the relevant scientific area. No. 2013-1377 (June 4, 2014 Fed. Cir.). The Board upheld the patent upon review, after which Consumer Watchdog appealed that decision to the Federal Circuit.
However, the Federal Circuit dismissed the case altogether, ruling that Consumer Watchdog simply did not have standing to proceed at the Federal Circuit. Because IPR review is not conducted by an Article III Court, parties are not required to have Article III standing to bring an IPR proceeding. The Federal Circuit, however, is a different situation. Because the Federal Circuit is an Article III Court, in order for the Federal Circuit to have subject matter jurisdiction, the complaining party must have suffered “an injury in fact.” But since there was no infringement action and Consumer Watchdog is not involved in stem cell research in any respect, the only injury that the organization could allege was that the PTO had upheld the patent. This, according to Judge Rader, was not enough of a “concrete injury,” to appeal the IPR ruling. The Federal Circuit’s decision quoted extensively from last year’s blockbuster Supreme Court decision in Hollingsworth v. Perry 133 S. Ct. 1329 (2013), which followed a trend at the Roberts Court of tightening the requirements on Article III standing.
In sum, this decision might be seen as part of the law of unintended consequences: the creation by Congress of an overlapping framework of administrative and Article III courts has created a situation where there is not always appellate review of the Board’s decisions to an Article III Court. In deciding whether to institute an IPR, parties should consider whether they can satisfy the standing proceedings and will have a right to an appeal.
* Special thanks to CRK summer clerk, Michael C. Bonella, for his work developing this post