About a month ago we posted an article on the dismissal of Consumer Watchdog’s appeal at the Court of Appeals for the Federal Circuit following a loss at the USPTO in an inter partes reexamination. Consumer Watchdog, Inc. had petitioned the U.S. Patent Office to review a stem cell patent owned by the Wisconsin Alumnae Research Foundation (WARF). A reexamination was conducted but the patent survived the challenge. Consumer Watchdog then appealed the government’s refusal to invalidate the WARF patent.

In Wisconsin Alumni Research Foundation, 753 F.3d 1258  (Fed. Cir. 2014), a three-judge panel of the CAFC found that a non-profit entity “dedicated to providing an effective voice for taxpayers and consumers” lacked standing to appeal to an Article III Court despite the statute’s general statement of a right to appeal. In the panel decision, written by Judge Rader, the court found that Consumer Watchdog, Inc., simply had “not identified a particularized, concrete interest in the patentability of the [patent at issue], or any injury in fact flowing from the Board’s decision.”

Well . . . unwilling to go quietly into the night . . . Consumer Watchdog has now petitioned the U.S. Supreme Court for certiorari review of the Federal Circuit decision. The Petition asserts that the Federal Circuit’s decision had failed to take into account cases concerning the Freedom of Information Act (FOIA) and the Federal Election Campaign Act, where the Supreme Court has upheld laws giving third parties standing to appeal agency actions.
Continue Reading Do-Gooders Won’t Take “No” For An Answer

In a decision this month (IPR2013-00308), the Patent Trial and Appeal Board (PTAB) has ruled against Stanford University’s patented method for detecting Down’s syndrome and other chromosomal defects, finding all of the challenged claims 1-13 invalid. The Stanford patent, U.S. Patent Number 8,296,076, is licensed to Verinata Health Inc., and is the subject of patent infringement litigation initiated by Verinata and Stanford against Ariosa Diagnostics in 2012 (Verinata Health Inc. et al. v. Ariosa Diagnostics Inc. et al., case no. 3:12-cv-05501, N.D. California). (Verinata is now owned by genetic instruments maker, Illumina, which acquired it in 2013 for over $350 million dollars.) The remaining two claims of US Patent 8,296,076, independent claim 14 and its dependent claim 15 directed to a “method of testing for an abnormal distribution of chromosome in a sample comprising a mixture of maternal and fetal DNA,” were not challenged in the IPR2013-00308.

In two other recent decisions in October, 2014, Verinata’s own IP survived challenges by Ariosa. In final decisions on IPR 2013-00276 and IPR2013-00277, the PTAB decided that Ariosa had failed to meet its burden of showing by a preponderance of evidence that the claims of U.S. Patent Number 8,318,430 were invalid, representing a rare outcome where all of the challenged claims in a IPR proceeding were successfully defended. The Verinata ‘430 patent is the subject of separate pending litigation in the Northern District of California between Verinata and Ariosa (Illumina, Inc. v. Ariosa Diagnostics, Inc., case no. 3:14-cv-01921, N.D. California).
Continue Reading Stanford Patent Found Invalid in IPR proceedings but Licensee’s IP Survives

August was another busy month for the USPTO’s Patent Trial and Appeal Board with nearly seventy new petitions filed challenging issued patents.

Last week at ceremonies in Washington, D.C. commemorating the second anniversary of the America Invents Act (AIA), Chief Administrative Patent Judge James Smith of the PTAB noted that over 500 hundred petitions had

By many estimates, somewhere between five and ten percent of patents that are issued each year by the U.S. Patent and Trademark Office (USPTO) never should have been granted.  The USPTO’s own statistics bear this out.  Each year a small sample of patent applications allowed by examiners in line for promotion are given a second review to assess the examiners’ skills – and each year about five percent of their work product is flagged for failing to cite and apply the closest prior art.  This data may indeed underestimate the number of bad patents since the sampled work product comes from examiners who knew that they are being considered for promotion and, hence, had every incentive to do an especially thorough job.

The general consensus until recently has been that the U.S. patent laws lacked effective mechanisms for opposing dubious patent claims once granted.  More specifically, many industrial groups have criticized the options available to challenge a granted patent administratively, without the need for multi-million dollar federal court litigation.

However, recent changes in federal law, new commitments from the U.S. Patent and Trademark Office, and a growing amount of statistical data suggest that a viable American system of post grant proceedings is emerging. Under this system, an administrative challenge to a questionable patent may be an effective defense strategy – even after federal court litigation has commenced against the would-be challenger.
Continue Reading Use of Post Grant Proceedings to Challenge Bad Patents