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”

Stanford Patent Found Invalid in IPR proceedings but Licensee’s IP Survives

By Tom Engellenner
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”

Chief Judge James Smith Comments on PTAB’s Docket

 By Tom Engellenner
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 been filed since the contested matters provisions of the AIA took effect.  He predicted that the USPTO will soon be seeing 1,000 new petitions a year challenging patents and that this case load will rival that of the busiest federal district courts hearing patent suits.

According to Judge Smith, the board is instituting trials more than 80 percent of the time and he predicted that the PTAB will grant at least 400 petitions and initiate invalidity trials on more than 400  patents in 2013.  He suggested that the high number of petitions “is indicative of the trust that patent challengers feel that the board is, at least in their view, going to do the right thing in these proceedings.”

“Once potential petitioners saw the high percentage that result in trials, it boosted the level of confidence that the board is taking these seriously,” he said.