Do-Gooders Won’t Take “No” For An Answer

By Tom Engellenner

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”

What Should A Jury Be Told About A Concurent PTO Trial?

By Anthony Pisano
Patent owners enforcing their rights who seek to exclude testimony about a pending administrative challenge to the patent-in-suit may face a Hobson’s choice – at least in Nevada. Particularly, the price for excluding evidence of pending administrative challenges to a patent may be a loss of the presumption of the patent’s validity in a district court trial.

In federal courts, judges may preclude evidence from being presented to a jury, particularly where the evidence has the potential to cause unfair prejudice. Such an opportunity is provided by Rule 403 of the Federal Rules of Evidence, which states that a court may exclude relevant evidence if its probative value is substantially outweighed by a danger of unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, and/or needlessly presenting cumulative evidence.

Judges may use Rule 403 in patent infringement cases, particularly in cases where the patent in question is part of a concurrent reexamination proceeding in the Patent Office. In a recent ruling on a motion to preclude evidence concerning a concurrent reexamination of a patent, the District Court of Nevada held, consistent with precedent, that the evidence would be prejudicial, and therefore was inadmissible at trial. Server Technology, Inc. vs. American Power Conversion Corporation (3:06-CV-00698-LRH-VPC (D. Nev.)).

Particularly, District Court Judge Larry Hicks stated that the reexamination of the patent in question was not final, and that a final decision would not occur until long after the trial. Judge Hicks reasoned that the prejudicial effect of notifying the jury about the reexamination proceeding would influence the jury’s determination of the issues of infringement and invalidity. In addition, allowing the evidence would only confuse a jury because both the standard of proof and the applied claim construction by the Patent Office would be different from the standards to be applied at trial. Such differences, in addition to causing jury confusion, would also waste time and resources because it would be necessary to explain the differences to the jury. Continue reading “What Should A Jury Be Told About A Concurent PTO Trial?”

Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold

By Ben Snitkoff
The regulations implementing Inter Partes Review (“IPR”), as well as Post-Grant Review (“PGR”), allow the Patent Trial and Appeal Board (“Board”) to join or stay certain proceedings by motion or sua sponte. See 37 C.F.R. § 42.122 (IPR), and 37 C.F.R. § 42.222 (PGR). This provision seems to make a good deal of sense in terms of avoiding duplication of effort and possible inconsistent results. Continue reading “Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold”