Consumer Watchdog Replies to United States Brief on Standing Issue

by McDonnell Boehnen Hulbert & Berghoff LLP

Consumer WatchdogIn December, the Federal Circuit invited the United States to address the issue of whether Consumer Watchdog had Article III standing to pursue an appeal of a decision by the Board of Patent Appeals and Interferences affirming the patentability of U.S. Patent No. 7,029,913, which is assigned to the Wisconsin Alumni Research Foundation (WARF).  The appeal arose from an inter partes reexamination of the '913 patent that Consumer Watchdog filed in 2006.  On January 17, the government argued that Consumer Watchdog lacked standing, and therefore, that its appeal should be dismissed (see "United States Argues That Consumer Watchdog Lacks Standing to Appeal Board Decision on WARF Patent").

In a brief filed on January 27, Consumer Watchdog argued that it indeed had standing to pursue the appeal.  Consumer Watchdog opened by contending that:

[N]one of the parties who are merely interested in th[e] patentability [of the '913 patent] has standing to bring this case.  Instead, only one party has standing to appeal the adverse decision of the PTO in inter partes reexamination number 95/000154 pursuant to 35 U.S.C. §§141 and 315(b)(1).  Consumer Watchdog is that party.

Consumer Watchdog acknowledges that "[a]s the Government pointed out repeatedly in its brief, the PTO could have declined CW's request for reexamination altogether, making the two statutes inapplicable to CW" (citations omitted).  However, the brief argues that "[a]fter CW completed that task and participated in the reexamination and Board of Patent Appeals and Interferences appeal for over five years at the PTO, the government's characterization of CW as 'wholly a stranger to the '913 patent' is hardly accurate" (citations omitted).

Consumer Watchdog contends that it has a concrete, differentiated interest in the Board's decision affirming the patentability of the '913 patent.  The brief states that:

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.  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.

Reiterating an argument in support of standing from its previous brief, Consumer Watchdog points to "three contexts in which petitioners who had requested and been denied a particular agency action sought and received judicial review, under a statute granting requesters that review, without showing injury independent of the denial."  Those three contexts consisted of requests under FECA and FOA, as well as the inter partes reexamination statutory scheme at issue here.  With respect to the latter, the brief notes that "[t]his Court has heard no less than four cases by third-party requesters who did not show independent injury."  In contrast, the brief points out that "[t]he Government does not reference a single case in which a denied requester who cited a statute granting judicial review to such denied requesters needed to prove injury to show standing."  While the government cited to cases under the APA and EPA, Consumer Watchdog suggests that "[w]hat distinguishes the APA/EPA cases from the FOIA/FECA/inter partes reexam cases is that, in the former cases, the plaintiffs sought review under statutes that didn't designate them as the precise parties to whom review was available," and therefore, contends that "[a]n independent showing of injury was thus necessary for standing."

According to the brief, the government creates an unsupportable loophole by arguing that a finding of no standing for Consumer Watchdog would not prevent the Court from finding standing for other third-party requesters of inter partes reexaminations whose disputes are unripe for declaratory judgment jurisdiction.  In particular, Consumer Watchdog argues that:

[A]n inter partes review decision favorable to patentability would injure a prospective competitor only in exactly the same way that CW is injured here.  The competitor would have spent substantial resources on a proceeding that did not change its inability to practice the claimed invention, and it would be estopped from challenging the validity of the upheld claims in the future.  If the Court does not find standing for CW in this case, it cannot justifiably find standing for other third-party requesters whose cases are unripe for declaratory judgment jurisdiction.

The brief criticizes the government's failure "to address the pragmatic catastrophe of its suggestion," asking whether the Court will need to schedule preliminary standing hearings in all such cases before it can reach the merits.  The brief also asks "[i]f the facts and circumstances change throughout the proceeding, should the Court be forced to continually measure the then-present motivations and intentions of the third party requester, deciding that maybe today the intentions are sufficient for standing, but tomorrow they are not?"

Finally, Consumer Watchdog argues that the government's position would create an asymmetrical scheme in which the third-party requester, but not the patentee, would be denied the right to appeal an adverse decision.  The brief explains that:

A rule that certain third-party requesters, competitors or not, lack the right to appeal a decision that would unquestionably be appealable by the adverse party if reversed is tantamount to saying to prospective third-party requesters, "You may participate, but only until you lose."  According to the government, if a patentee wins at the PTO, the requester may not appeal to the Court, and the matter is over.  If a patentee loses at the PTO, however, then it may indeed appeal to the Court, where if it wins, the challenger would not have the right to seek further review either en banc or from the Supreme Court.

Consumer Watchdog concludes by arguing that "[s]uch an asymmetrical ending to what Congress unambiguously intended to be an inter partes proceeding is unjust and violates principles of fundamental fairness."

In a letter to the Court, WARF's counsel noted that "[b]ecause Appellee Wisconsin Alumni Research Foundation fundamentally agrees with the United States' position as applied to the facts of this case -- specifically, that Consumer Watchdog lacks Article III standing to pursue its appeal in this Court -- Appellee declines the Court's invitation to file a responsive brief."


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.