Monday, August 07, 2017

CAFC in Personal Audio: a third-party winning challenger at PTAB is not constitutionally excluded from appearing in court to defend the PTAB decision in its favor

Of the standing issue in Personal Audio (Appeal from the United States
Patent and Trademark Office, Patent Trial and Appeal Board in
No. IPR2014-00070):

We asked the parties to brief the question of whether
EFF has standing to participate in this appeal, in view of
the court’s holding in Consumer Watchdog v. Wisconsin
Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir.
2014), that a PTAB petitioner that does not meet the
Article III case-or-controversy requirement does not have
standing to invoke judicial power, and thus does not have
standing to appeal to this court from a PTAB decision on
inter partes reexamination. The court in Consumer
Watchdog stated that “although Article III standing is not
necessarily a requirement to appear before an administrative
agency, once a party seeks review in a federal
court, ‘the constitutional requirement that it have standing
kicks in.’” Id. at 1261 (quoting Sierra Club v. E.P.A.,
292 F.3d 895, 899 (D.C. Cir. 2002)). Thus the court held
that Consumer Watchdog, a non-profit organization
described as representing the public interest, did not have
standing to appeal to the Federal Circuit from the PTAB
decision that sustained the validity of the patent Consumer
Watchdog had challenged.

35 U.S.C. § 141(c) provides the right of appeal to the
Federal Circuit for “[a] party to an inter partes review or
a post-grant review who is dissatisfied with the final
written decision of the Patent Trial and Appeal Board.”
Consumer Watchdog raises no question as to whether
EFF has standing to appear in this court to defend the
judgment of the PTAB, for EFF is not the appellant. The
Court explained in ASARCO Inc. v. Kadish, 490 U.S. 605
(1989), in an appeal from the Arizona Supreme Court to
the United States Supreme Court, that standing to appeal
is measured for the party “seek[ing] entry to the federal
courts for the first time in the lawsuit”:

The following year, in U.S. Department of
Labor v. Triplett, 494 U.S. 715, 732 (1990), Justice Marshall
explained in concurrence that: “Because respondent
has not invoked the authority of any federal court, then,
federal standing principles are simply inapplicable to
Here, the party invoking judicial review is Personal
Audio; it is apparent that Personal Audio, on cancellation
of its patent claims by the PTAB, has experienced an
alteration of “tangible legal rights . . . that is sufficiently
‘distinct and palpable’ to confer standing under Article
III.” Virginia v. Hicks, 539 U.S. 113, 121 (2003) (internal
citations omitted). With Article III satisfied as to the
appellant, EFF is not constitutionally excluded from
appearing in court to defend the PTAB decision in its

After a discussion of the substantive patent issues, the CAFC
affirmed PTAB:

We have considered all of Personal Audio’s arguments,
and affirm the PTAB’s conclusion that the challenged
claims are anticipated by the Patrick/CBC
reference, and alternatively that the claims are invalid as
obvious in view of the Compton/CNN reference.
The decision of the PTAB, holding claims 31–35 of the
’504 Patent unpatentable, is affirmed.

See also Court says patent troll didn’t invent podcasting


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