Wednesday, March 09, 2016

CAFC decides Bamberg v. Dalvey interference in favor of junior party; insights for CRISPR patent interference

Further to recent IPBiz post on the CRISPR patent interference, the recent CAFC decision in
Bamberg v. Dalvey offers some insights on patent interference practice.
Of relevance to CRISPR, the junior party in the CAFC case (Dalvey, analogous
to the position of Zhang in CRISPR) defeated the senior party in the
CAFC case (Bamberg, analogous to the position of Doudna in CRISPR)
based on lack of patentability under 35 USC 112 (which is apt to arise
in the CRISPR case).

Procedurally in the CAFC case, Bamberg, Peter Kummer, and Ilona Stiburek appeal
from the Patent Trial and Appeal Board’s consolidated
interference proceeding decision refusing to allow the
claims of four patent applications because the specification
failed to meet the written description requirement of
35 U.S.C. § 112.

Relevant to the CRISPR matter, Bamberg was declared the senior party to the interference under 37 C.F.R. § 2.96,
and in this case, the senior party LOST at PTAB and LOST at the CAFC. It is also worth mentioning that
this was a consolidated case [The three interferences were subsequently consolidated
into one, No. 105,964. ]

As to the law, as the junior party, Dalvey was required to
prove an earlier priority date by a preponderance of the
evidence. The junior party alleged lack of patentability of the
claims of the senior party [During the interference proceeding, Dalvey filed a
motion alleging that Bamberg’s claims were unpatentable
for lack of written description, as required by 35 U.S.C.
§ 112. ]

Yes, Teva is cited: Bamberg urges us to find that the Board erred in its
claim construction by improperly importing a functional
limitation requiring the white layer to melt below 220°C.
We review underlying factual determinations concerning
extrinsic evidence for substantial evidence and the ultimate
construction of the claims de novo. Teva Pharm.
U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

The BRI standard was used:

Because this is an interference, and Bamberg [senior party] copied
Dalvey’s claims, we give the claims their broadest reasonable
construction in light of the Dalvey specification.
Harari v. Lee, 656 F.3d 1331, 1340 (Fed. Cir. 2011);
see also Agilent Techs., Inc., 567 F.3d at 1375 (“[W]hen a
party challenges written description support for an interference
count or the copied claim in an interference, the
originating disclosure provides the meaning of the pertinent
claim language.”); In re Spina, 975 F.2d 854, 856
(Fed. Cir. 1992) (“When interpretation is required of a
claim that is copied for interference purposes, the copied
claim is viewed in the context of the patent from which it
was copied.”). “[U]nder the broadest reasonable interpretation,
the Board’s construction cannot be divorced from
the specification and the record evidence, and must be
consistent with the one that those skilled in the art would
reach.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1298 (Fed. Cir. 2015) (internal quotations and citations

The senior party's argument was rejected:

Dalvey’s specification defines “white layer” as “a layer
on a transfer sheet positioned between a release layer and
a receiving layer. The white layer imparts a white background
on a dark substrate.” U.S. Patent No. 7,749,581,
col. 3 ll. 32–36. The specification discloses embodiments
in which the white layer melts at a number of different
temperatures. Id. at col. 10 l. 65 – col. 11 l. 5 (“Heat 850
was applied to the peeled printed layers 820 and the
release paper 852. The heat 850 was applied at 200 F, 225
F, 250 F, 300 F, 350 F, and 400 F. A good image transfer
was observed for all of these temperatures.”);2 id. at col. 6
ll. 32–37 (“When heat is applied to the image transfer
sheet . . . [the white layer] exhibit[s] a melt point from
20°C up to 225°C”); id. at col. 7 ll. 14–15 (“The LDPE
polymer of the [white layer] melts at a point within a
range of 43°–300°C.”). We find no error in the Board’s
conclusion that the broadest reasonable interpretation of
“white layer” includes within its scope a white layer that
melts at temperatures both above and below 220°C.

And, the senior party's specification failed
uner 35 USC 112:

“the applicant must
‘convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession
of the invention,’ and demonstrate that by disclosure
in the specification of the patent.” Carnegie Mellon Univ.
v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563–64 (Fed. Cir. 1991)). Satisfying the written description
requirement is a question of fact that we review for
substantial evidence. Harari, 656 F.3d at 1341 (citing
Chen v. Bouchard, 347 F.3d 1299, 1304 (Fed. Cir. 2003)).
Because the contested claims are properly construed
in light of Dalvey’s specification to encompass a white
layer that melts above and below 220°C, Bamberg’s
specification must also support a white layer that melts
above and below 220°C to satisfy the written description
requirement. Substantial evidence supports the Board’s
determination that Bamberg’s specification fails to meet
the written description requirement.

An interesting analysis by the CAFC:

Bamberg attempts to distinguish Tronzo by arguing
that its specification does not distinguish the prior art as
“inferior” but simply claims that a melting white layer is
“undesired.” J.A. 1391. Bamberg asserts that it meets
the written description requirement because it “obviously
had an embodiment that did melt,” and therefore one
reasonably skilled in the art would understand that one
“could have a layer that melted, but it may not be as
good.” Oral Argument at 10:51–58, 13:35–44,
15-1548.mp3. (...)

Moreover, this is a distinction without a difference.
We are not persuaded by the assertion that one skilled in
the art would understand that an inventor possesses
something that it deems undesirable, but not something
that it deems inferior. An inventor aware of an “unde-
sired” embodiment theoretically could possess that invention,
perhaps by including it in the description of a preferred
embodiment in the specification. But that is not
the question. For purposes of the written description
requirement, “the subject matter of the counts [must] be
described sufficiently to show that the applicant was in
possession of the invention.” Goeddel v. Sugano, 617 F.3d
1350, 1356 (Fed. Cir. 2010).

Consequently, like in Tronzo, we find that Bamberg
does not possess a white layer that melts below 220°C
because it specifically distinguished white layers that
melt below 220°C as producing an “undesired” result. Cf.
Tronzo, 156 F.3d at 1159 (Statements that the prior art is
“inferior” “make clear that the [parent patent] discloses
only conical shaped cups and nothing broader.”). Even
Mr. Bamberg’s testimony confirms that his invention did
not include a white layer that melted below a threshold of
220°C so as to not decrease the clarity and resolution of
the final image.

There was an amendment issue:

A party seeking to add or amend a claim has the burden
of establishing that the amended or new claim is
supported by an adequate written description. See 37
C.F.R. § 41.121(b) (“The party filing the motion has the
burden of proof to establish that it is entitled to the
requested relief.”). The PTO has determined that, in the
context of interference proceedings, this burden is best
satisfied with a claim chart. 37 C.F.R. § 41.110(c) (“Any
motion to add or amend a claim must include: (1) A clean
copy of the claim, (2) A claim chart showing where the
disclosure of the patent or application provides written
description of the subject matter of the claim, and
(3) Where applicable, a copy of the claims annotated
. . . .”).
We review a Board decision “pursuant to the permissive
rules governing a patent interference proceeding for
abuse of discretion.” Koninklijke Philips Elecs. N.V. v.
Cardiac Sci. Operating Co., 590 F.3d 1326, 1334 (Fed. Cir.
2010) (quoting Eli Lilly & Co. v. Bd. of Regents of the
Univ. of Wash., 334 F.3d 1264, 1266 (Fed. Cir. 2003)).
“An abuse of discretion occurs if the decision (1) is clearly
unreasonable, arbitrary, or fanciful; (2) is based on an
erroneous conclusion of law; (3) rests on clearly erroneous
fact findings; or (4) involves a record that contains no
evidence on which the Board could rationally base its
decision.” Id. (quoting Eli Lilly, 334 F.3d at 1266–67).
Here, Bamberg did not provide a claim chart—the
principal means for determining if Bamberg satisfied its
burden of establishing that the proposed amended claims
were supported by an adequate written description—and
thus failed to comply with the regulations governing
interference proceedings. See 37 C.F.R. § 41.110(c). The
Board denied the motion after concluding that Bamberg’s
failure to provide a claim chart improperly shifted to
Dalvey the burden of establishing that the amended claim
is not supported by an adequate written description. See
37 C.F.R. § 41.121(b).

See also other IPBiz posts on the CRISPR matter

Some thoughts on the upcoming CRISPR patent interference


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