Thursday, May 07, 2015

Biogen loses appeal at CAFC related to Interference No. 105,939 (Walter Fiers: U.S. Patent Application No. 08/253,843 )

The bottom line in Biogen vs. Japanese Foundation (2014-1525):

We conclude that as a result of the transfer we have
jurisdiction under pre-AIA 35 U.S.C. § 141 to hear Biogen’s
appeal. This is so because the AIA eliminated district
courts’ subject matter jurisdiction under pre-AIA 35
U.S.C. § 146 to review decisions in interference proceedings
declared after September 15, 2012. We therefore
decline to transfer this case back to the district court.
On the merits, we conclude that the Board did not err
in entering judgment against Fiers on the basis of interference
estoppel because Fiers did not discharge its burden
in response to the Board’s show cause order to
provide evidence of the patentable distinctness of its hFIF
protein claims over the DNA sequences encoding for such

Biogen’s request for retransfer is:  DENIED

The Board’s decision is:  AFFIRMED


**As to the jurisdiction issue:

In In re Teles AG Informationstechnologien, 747 F.3d
1357 (Fed. Cir. 2014), we concluded that we had jurisdiction
in a case virtually indistinguishable in principle from
this case. In Teles, the district court dismissed a patentee’s
action brought under 35 U.S.C. § 145 to review a
Board ex parte reexamination decision for lack of subject
matter jurisdiction. The district court then transferred
the case to this court pursuant to § 1631. We held that the
dismissal was improper and that the district court should
have only transferred the case. Teles, 747 F.3d at 1359–
61. Treating the case as though it had been properly
transferred, we then proceeded to address the question of
the district court’s jurisdiction under 35 U.S.C. § 145 and
the question of statutory interpretation underlying that
issue under a de novo standard. See id. at 1361. We held
that amendments to the patent statute had eliminated
district court review of actions under 35 U.S.C. § 145 for
patent owners (as opposed to applicants) and “affirm[ed]
that the district court lacked jurisdiction over the § 145
action.” Id. at 1366.
It is undisputed that we have “inherent jurisdiction to
determine [our] own jurisdiction.” C.R. Bard, Inc. v.
Schwartz, 716 F.2d 874, 877 (Fed. Cir. 1983) (citing
United States v. United Mine Workers of Am., 330 U.S.
258 (1947)). In this context, Congress has provided two
mutually exclusive avenues of review under § 146 and
§ 141, so the question of our jurisdiction and the district
court’s jurisdiction are different sides of the same coin. If
the district court lacked jurisdiction under § 146, we have
jurisdiction under § 141 (as a result of the transfer), and if
the district court court had jurisdiction under § 146, we
lack jurisdiction under § 141. This latter proposition
requires some explanation.
Ultimately, we conclude that
specific statutory provisions in the AIA as amended7
govern the availability of § 146 review for interferences
declared after September 15, 2012, and that for interferences
declared after that date, § 146 review is not available.
The AIA changed the patent system, among other
things, from a first-to-invent to a first-inventor-to-file
regime for determining patent priority. See AIA § 3;
Madstad Eng’g, Inc. v. U.S. Patent & Trademark Office,
756 F.3d 1366, 1368 (Fed. Cir. 2014). In doing so, it
amended the patent statute’s central provisions on patentability,
including 35 U.S.C. §§ 102–103, AIA § 3(a)–
(c); established derivation proceedings and eliminated
interference proceedings, AIA § 3(i)–(j); and changed the
BPAI to the PTAB, AIA §§ 3(j), 7(a).
In interpreting a statute, we start with the statute’s
language. Hughes Aircraft Co. v. Jacobson, 525 U.S. 432,
438 (1999). Unfortunately, the effective date provisions in
the AIA are far from a model of clarity. In general, the
statute contains a hodgepodge of express reservations of
pre-AIA provisions, see AIA § 6(c)(2)(C) (pre-AIA provisions
regarding inter partes reexamination “shall continue
to apply to requests for [certain] inter partes

As to "which law":

We think JFC’s interpretation in this respect is
untenable since it is clear from the structure of the statute
that new provisions cannot be applied in their entirety
to old applications. See Tobinick v. Olmarker, 753 F.3d
1220, 1223 n.1 (Fed. Cir. 2014) (explaining that pre-AIA
law applies generally to old interferences). Indeed, JFC
agrees that pre-AIA law generally applies to interferences
before the PTO. While we thus construe § 3(n)(1) as
applying the new AIA provisions only to new applications,
it does not follow that § 3(n)(1) requires application of pre-
AIA judicial review provisions to old applications.
For interferences declared after September 15, 2012, this
provision explicitly authorizes pre-AIA § 141 review, but
unlike AIA § 6(f)(c)(3), does not authorize pre-AIA § 146
review. Therefore, AIA § 6(f)(3)(C) and TCA § 1(k)(3)
together make clear that pre-AIA § 146 review was eliminated
for interference proceedings declared after September
15, 2012.
The specific provisions in § 6(f)(3)(C) and § 1(k)(3)
require us to apply the basic tenet of statutory interpretation
that the specific governs the general. As the Supreme
Court said in RadLAX Gateway Hotel, LLC v. Amalgamated
Bank, 132 S. Ct. 2065 (2012), it is “a commonplace
of statutory construction that the specific governs the
general,” especially where Congress “has enacted a comprehensive
scheme and has deliberately targeted specific
problems with specific solutions.” Id. at 2071 (internal
quotation marks and citations omitted). This principle
equally applies when it comes to interpreting effective
date provisions.
Here, even if the general effective date provision in
§ 3(n)(1) suggests that in general Congress preserved pre-
AIA provisions for pre-March 16, 2013, patent applications,
it does not follow that we should myopically apply
§ 3(n)(1) independently of the specific provisions in AIA
§ 6(f)(3)(C) and § 1(k)(3). Here, Congress “deliberately
targeted specific problems with specific solutions,”
RadLAX, 132 S. Ct. at 2071, so we cannot ignore them.
Nor does the legislative history of the AIA suggest otherwise.
While Senator Kyl recognized “the continuing need
to allow appeals of pending interferences,” 157 Cong. Rec.
1377 (2011) (emphasis added), the legislative history is
silent about the specific question of what pre-AIA review
was available for interference proceedings declared after
September 15, 2012.
In short, because the AIA and its technical corrections
provided that only pre-AIA § 141 review in this court
would be available for interferences declared after September
15, 2012, and the ’939 interference here was
declared July 16, 2013, the district court properly found
that it lacked subject matter jurisdiction. It follows that
we have jurisdiction to hear Biogen’s appeal pursuant to
§ 141.

As to the merits:

Interference estoppel “by judgment” applies where “a
losing party in a previous interference between the same
parties” tries to patent a claim “not patentably distinct
from the counts in issue in that [prior] interference.”
Woods v. Tsuchiya, 754 F.2d 1571, 1579 (Fed. Cir. 1985);
see also In re Deckler, 977 F.2d 1449, 1452 (Fed. Cir.
1992) (holding that a losing priority judgment in an
interference proceeding bars the loser from obtaining a
patent containing claims that are patentably indistinguishable
from the claims corresponding to the lost
count); MPEP § 2308.03 (9th ed. March 2014) (interference
estoppel applies where a “losing party is barred on
the merits from seeking a claim that would have been
anticipated or rendered obvious by the subject matter of
the lost count”).

Of restriction requirements:

Restriction requirements are discretionary
decisions, primarily for administrative convenience, and
do not represent a final determination that the relevant
claims are patentably distinct. See Applied Materials, Inc.
v. Advanced Semiconductor Materials Am., Inc., 98 F.3d
1563, 1568 (Fed. Cir. 1996) (noting restriction requirement
is for “administrative convenience”); Transco Prods.
Inc. v. Performance Contracting, Inc., 38 F.3d 551, 558–59
(Fed. Cir. 1994) (same); In re Watkinson, 900 F.2d 230,
233 (Fed. Cir. 1990) (restriction is “a matter within the
discretion of the examiner and not tantamount to a rejection
of claims”); In re Hengehold, 440 F.2d 1395, 1403
(CCPA 1971) (restriction is a “discretionary, procedural or
nonsubstantive” matter).


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