2008-1418 Human Genome v. Immunex
D/DE 07-CV-780
Judge Sue Robinson
Humane Genome (HGS) appeals from Judge Sue Robinson's order dismissing the complaint for lack of subject matter jurisidiction. Although not a patent infringement action (and therefore not the usual PATracer fare), the case derives from an interference proceeding before the BPAI and an interesting decision from a judge that hears a lot of patent cases.
Unhappy with the preliminary rulings against it during the interference--rulings which HGS believed precluded it from prevailing in the interference--HGS attempted to simply concede the issue solely for the purpose of appealing to the district court under 35 U.S.C. § 146. A practice, it argued, that is conceptually similar to a patentee conceding non-infringement so as to appeal an adverse claim construction ruling. While HGS successfully conceded the issue and lost the interference, the district court dismissed the appeal finding that such concessions failed to give the district court subject matter jurisdiction.
An interference was declared between HGS's 6,872,568 patent (to Ni) and Immunex's 09/378,045 application. While the '045 application was filed first, the '568 patent claimed priority to several earlier applications. During the preliminary motions phase Immunex was given the benefit of an earlier, 1997, application, but HGS was denied the benefit of any of the earlier applications, leaving it with a May 2000 priority date.
After redeclaring the interference, the proceeding moved to the priority phase in which the Board would receive evidence, testimony and decide the ultimate issue of priority of inventorship. HGS, however, filed with the Board a request for an adverse judgment in order to proceed immediately to appeal under § 146. HGS stated:
HGS concedes that based on the Board's decisions on motions the Board will enter judgment adverse to HGS on priority. In its request for adverse judgment, HGS was merely noting that it reserves its rights concerning the decisions on motions and the priority issues that would result from any modification thereof.
The priority issue that was subject to ongoing briefing here is different from the priority issues that would result if HGS's challenges to the decisions on motions succeed in the action under 35 U.S.C. § 146. For example, as a result of the decisions on motions, HGS is the junior party with a constructive reduction to practice date that follows Immunex's constructive reduction to practice date by more than three years .... If the decisions on motions are altered, HGS reserves its rights to prove priority in a differently defined priority contest.
After some back and forth in which the Board demanded that HGS proceed, the Board entered an order to show cause and entered judgment against HGS on the priority and canceled certain claims of the '568.
HGS then appealed to the district court, which granted Immunex's motion to dismiss. Reviewing the interference process and its purpose, the court decided that HGS's actions denied the Board an opportunity to determine the issue in the first instance:
In this regard, it is clear that the fundamental purpose of interference proceedings is to give the Board a full and fair opportunity to determine priority. It is evident from the record that HGS presented to the Board little more than conclusory arguments. Indeed, HGS failed to provide even enough information to allow the Board to specifically define the scope of the dispute. If the court were to allow HGS' § 146 appeal to go forward on this record, it would constitute an effective usurpation of the Board's original jurisdiction to determine priority. Moreover, HGS' failure to adequately develop the record leaves too much room for mischief in a § 146 appeal, where supplemental discovery can be taken and new evidence proffered to the court. Although the court is mindful that there is room for debate on these issues and that HGS may not have any administrative recourse if the appeal is dismissed, nevertheless, the court concludes that HGS has not carried its burden to prove that the court has subject matter jurisdiction under 35 U.S.C. § 146.
In reaching this conclusion, the court somewhat distinguished Rasmussen v. Smithkline Beechem, 413 F.3d 1318 (Fed. Cir. 2005), in which the Federal Circuit reviewed the Board's decision following one party's request for an adverse judgment. There, the Board's decision was appealed directly to the CAFC under 35 U.S.C. §§ 141-144 and was based entirely on the record before the Board. Here, in appeals to the district court, additional evidence and material may be considered by the court beyond what was before the Board.
Note:
Judge Robinson was clearly concerned with the fact that HGS, in her view, didn't really put the effort into trying the matter to the BPAI. She quoted liberally from BPAI orders and decisions also critical of this effort, such as:
In other words, the Board did not afford HGS the benefit of any of its earlier filed applications in the chain because HGS did not sufficiently connect the disclosure of the '568 patent, filed as a continuation-in-part application, to that of the applications preceding it. More specifically, in its July 26, 2007 decision, the Board explained that:
"[i]t is not the job of the Board to pour through hundreds of pages of text and sheets of drawings to find disclosure alleged to be "at least the same disclosure as is found in the March 17 and July 29, 1997 priority applications." See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) ("Judges are not like pigs hunting for truffles buried in briefs"). It is not the fact finder's burden to search through lengthy technology-intense documents for possible evidence which may support Ni's "at least the same reasons."
More reading:
Counsel:
HGS: Steven J. Balick, John G. Day, and Lauren E. Maguire of Ashby & Geddes, Wilmington, Delaware; Richard L. DeLucia, John R. Kenny, and A. Antony Pfeffer of Kenyon & Kenyon LLP, New York, New York.
Immunex: Melanie K. Sharp and Chad S. C. Stover of Young Conaway Stargatt & Taylor, LLP, Wilmington, Delaware; Michael J. Wise and Lauren Sliger of Perkins Coie LLP, Santa Monica, California.
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