Archive for the ‘Stem Cells/Cloning’ Category

Consumer Watchdog v. Wis. Alumni Res. Foundation – Plaintiff Lacks Standing To Appeal Reexamination Loss

Wednesday, June 4th, 2014

In Consumer Watchdog v. WARF, App. No. 2013-1377 (Fed. Cir., June 4, 2014) the Fed. Cir. found that the Watchdog can bark, but it can’t get a second bite. (A copy can be found at the end of this post.)

Consumer Watchdog lost an inter partes reexamination that it initiated to challenge the validity of WARF’s stem cell patent, U.S. Pat. No. 7,029,913. (A copy can be found at the end of this post.) Although the statute facially gives reexamination losers the right to appeal, in this case, the panel found that Watchdog lacked the requisite “actual or imminently threatened injury” required under the Constitution’s Art. III to appeal the adverse decision. Watchdog was not an “actual or prospective competitor of WARF or a licensee” but simply alleged general harm to taxpayer-funded research in California, due to WARF’s licensing efforts or that the patent completely preempted all uses of human embryonic stem cells.

The panel found that the “injury” requirements apply “with equal force to appeals from administrative agencies, such as the [PTO], to the federal courts.” Article III standing was stated not to be a requirement “to appear before an administrative agency” as in a reexamination proceeding, but “once a party seeks review in a federal court, ‘the constitutional requirement that it have standing kicks in’[{citing Sierra Club v. E.P.A]…the ‘requirement for injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute.’”

This all makes perfect Constitutional law sense, but I can see the posters now: “Who will protect the (potential) fetuses from ‘injury’?” If for a moment, this seems far-fetched, go to Amazon and search for “Should Trees Having Standing.”



Top Ten IP Stories from 2013

Monday, December 16th, 2013

I admit it, I like lists, even completely subjective ones like this one, that is tilted toward patent law and prep/pros. So in no particular order, except for number one, here we go:


  1. Myriad [Add your pun title here!]. No story can top a unanimous Supreme Court opinion (Thomas writing even!) holding that a discrete chemical molecule is really a data storage device made for us all by Mother Nature, and so is a “natural product”. More troubling, I fear, are Judge Lourie’s two opinions below, holding that the broadly-claimed diagnostic methods were patent-ineligible as “abstract ideas.” Combine this with Mayo and PerkinElmer v. Intema and you get caught in a perfect storm that can sink almost any claim to a diagnostic method.
  2. CLS Bank v. Alice. A big story indeed, as commentators tried, with little success, to unravel the threads in multiple opinions issued by the Fed. Cir. judges. Now the Supreme Court will try to define an abstract idea. Is C =pi(D) carved into a brick concrete enough for you?
  3. Inequitable Conduct goes into IP hospice. While we still have a duty of candor and good faith in dealing with the PTO, Rule 1.56(b) is gone. A simple failure to submit even “material” information will seldom, if ever, lead to an IC holding. In 1st Media v Electronic Arts, Sony, a defendant in the suit, petitioned for cert., playing the “rigid test” card, but the Supreme Court stood pat and denied the petition. In Network Signatures v. State Farm, Judge Newman suggested that facially false petitions would not amount to “egregious misconduct” unless they involved statutory standards of patentability, as opposed to formal PTO filings. However, the Supreme Court also denied cert.  in Apotex v. Cephalon, in which the Cephalon attorney and scientist obtained a patent on an invention made by their supplier – both the D.C. and the Fed. Cir found IC. And where are the final PTO rules? (more…)

UK National Stem Cell Network Report – The Patent Watch Landscape

Thursday, March 7th, 2013

If you have either a passing or passionate interest in stem cell patenting, this report is worth some of your time. (A link to the report can be found at the end of this post.)

The report analyzes the stem cell patent landscape from November 2008 to Oct 2009 and from November 2008 to October 2011. The “patent watch dataset” is based on patent applications published or patents issued/ granted by the PCT and in the US, EP and  UK. The top applicant of published applications is Kyoto University and the top applicant on granted patents is WARF.

However, the report goes far beyond a simple numbers game; it analyzes the therapeutic areas of research represented by the stem cell IP. The report provides topography maps of the various areas such as pluripotent cells (e.g., embryonic stem cells) that is still a very active area, as is research in the areas of hematopoietic stem cells and neural stem cells. Even more interesting is the analysis that maps collaborations between high-filing universities and their spin-offs or start-up companies, as well as established companies.

Having done some of the early IP work on pluripotent adult stem cells, I found the report as addictive as a box of chocolates – I never was sure what would be on the next page.


Supreme Court Denies Cert. in Sherley v. Sebelius

Wednesday, January 9th, 2013

The pesky worry about a possible Supreme Court review of the ruling by the D.C. Court of Appeals affirming the Circuit Court’s dismissal of a challenge to the 2009 NIH Stem Cell Funding Guidelines – which permitted NIH funding of most stem cell research – was lifted today when the Supreme Court denied plaintiff’s petition for cert. With the re-election of President Obama, who initially lifted the ban on all but very limited stem cell research imposed by President Bush, hopefully the U.S. will return to a position of leadership and help this area of research mature.

Click here to read the story from the Stem Cell Action Coalition.