Berman v. Housey, 01-1311.

• Decision Date: 29 May 2002
• Docket Number: No. 01-1311.,01-1311.
• Citation: 291 F.3d 1345
• Parties: Phillip W. BERMAN, Timothy J. Gregory, Laurence A. Lasky, Gerald R. Nakamura, Eric J. Patzer, John S. Patton, and Ellen S. Vitetta, Appellants, v. Gerard M. HOUSEY, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

291 F.3d 1345

Phillip W. BERMAN, Timothy J. Gregory, Laurence A. Lasky, Gerald R. Nakamura, Eric J. Patzer, John S. Patton, and Ellen S. Vitetta, Appellants, v. Gerard M. HOUSEY, Appellee.

No. 01-1311.

United States Court of Appeals, Federal Circuit.

May 29, 2002.

COPYRIGHT MATERIAL OMITTED

R. Danny Huntington, Burns, Doane, Swecker & Mathis, L.L.P., of Alexandria, VA, argued for appellants. With him on the brief were Donna M. Meuth, and Bruce Wieder.

Steven J. Lee, Kenyon & Kenyon, of New York, NY, argued for appellee. With him on the brief was Kenneth R. Corsello.

John M. Whealan, Solicitor, Office of the Director, United States Patent and Trademark Office, of Arlington, VA, for amicus curiae The Director of the United States Patent and Trademark Office. With him on the brief were Mark Nagumo, and Linda Moncys Isacson, Associate Solicitors.

Before LOURIE, BRYSON, and GAJARSA, Circuit Judges.

LOURIE, Circuit Judge.

Phillip W. Berman, Timothy J. Gregory, Laurence A. Lasky, Gerald R. Nakamura, Eric J. Patzer, John S. Patton, and Ellen S. Vitetta (collectively, "Berman") appeal from the decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences entering judgment in favor of Gerard M. Housey and dismissing Berman's unpatentability motion as moot. Berman v. Housey, Inter. No. 104,347, slip op. at 17 (Bd. Pat. App. & Inter. Dec. 21, 2000) ("Berman II"). Because the Board did not err in refusing to consider Berman's unpatentability motion and in entering judgment in favor of Housey, we affirm.

BACKGROUND

Berman's U.S. Patent Application 08/953,550 is directed to, inter alia, a method of determining whether a substance inhibits the binding of T4 receptors to the T cell binding domain of gp120. Id. at 2. That application was accorded the benefit of the February 20, 1987, filing date of one of Berman's earlier copending applications. On October 17, 1997, Berman filed a preliminary amendment canceling all the claims in the '550 application and introducing new independent claim 64 and dependent claims 65 and 66. Id. Berman also requested that an interference be declared with one of Housey's pending applications, which later issued on November 18, 1997, as U.S. Patent 5,688,655 ("Housey III"). Id.

The examiner rejected claims 64-66 on various grounds, and Berman responded by canceling claims 65 and 66 and amending claim 64. Id. Amended claim 64, presently the sole remaining claim in the '550 application, reads as follows:

64. A method of identifying an anti-gp120 monoclonal antibody that is an inhibitor of the binding of T4 receptor to the T cell binding (TCB) domain of gp120 by blocking or binding said TCB domain, which method comprises:

(a) providing a CHO cell which has been transformed to produce T4 receptor relative to a control CHO cell which does not produce T4 receptor, and wherein production of T4 receptor enhances the ability to bind to the TCB domain of gp120 in the transformed cell, which ability is greater in said transformed cell than in said control cell,

(b) treating said transformed cell with an anti-gp120 monoclonal antibody and gp120, and

(c) examining the treated transformed cell to determine whether inhibition of the binding of T4 receptor to the TCB domain of gp120 has occurred in response to said anti-gp120 monoclonal antibody of (b).

The examiner found claim 64, as amended, to be patentable, and was of the opinion that it interfered with the claims of Housey III as well as the claims of two other Housey patents: U.S Patent 4,980,281 ("Housey I"), issued on December 25, 1990, and U.S. Patent 5,266,464 ("Housey II"), issued on November 30, 1993. Id. at 3. After the examiner forwarded Berman's application to the Board, the present interference was declared between claim 64 of the '550 application and claims 1 and 22 of Housey I, claims 1 and 5 of Housey II, and claim 1 of Housey III. Id. Claim 1 of Housey I is representative of the claims in Housey I involved in this appeal, and it reads as follows:

1. A method of determining whether a substance is an inhibitor or activator of a protein whose production by a cell evokes a responsive change in a phenotypic characteristic other than the level of said protein in said cell per se, which comprises:

(a) providing a first cell line which produces said protein and exhibits said phenotypic response to the protein;

(b) providing a second cell line which produces the protein at a lower level than the first cell line, or does not produce the protein at all, and which exhibits said phenotypic response to the protein to a lesser degree or not at all;

(c) incubating the substance with the first and second cell lines; and

(d) comparing the phenotypic response of the first cell line to the substance with the phenotypic response of the second cell line to the substance.

Housey I, col. 24, ll. 46-63. The claims of Housey II involved here are identical to those in Housey I, except that they require the use of CHO cell lines. Housey II, col. 31, l. 32 to col. 32, l. 6. Claim 1 of Housey III is also similar to the claims in Housey I, except that the screening method claimed therein utilizes a control cell, which obviates the need to use two separate cell lines to determine whether a particular substance acts to inhibit or activate cell proteins that cause a phenotypic change in the cell being analyzed. That claim reads as follows:

1. A method of determining whether a substance is an inhibitor or an activator of a protein, which comprises:

(a) providing a test cell which overproduces a selected protein relative to a control cell which produces said protein at a lower level or essentially does not produce the protein, and wherein production of said protein in said test cell evokes a responsive change in a phenotypic characteristic, other than the level of said protein in said cell, per se, which is comparatively greater than in said control cell,

(b) treating said test cell containing the overproduced selected protein with said substance, and

(c) examining the treated test cell to determine whether it exhibits a change in said phenotypic characteristic in response to said substance.

Housey III, col. 29, ll. 27-41.

The Board set July 23, 1999, as the expiration date for the filing of any preliminary motions. Berman v. Housey, Inter. No. 104,347, slip op. at 2 (Bd. Pat.App. & Inter. Apr. 7, 1999). On April 19, 1999, Housey filed a preliminary motion under 37 C.F.R. § 1.633(a), which the Board agreed to hear on an expedited basis, asserting that claim 64 of the '550 application was barred under 35 U.S.C. § 135(b) because that claim was not made within one year of the issuance of Housey I and Housey II. Berman II at 3. Berman filed an opposition to that motion, arguing that original claim 27, filed on February 20, 1987, was directed to substantially the same subject matter as Housey's involved claims, and thus that the bar of § 135(b) was inapplicable. Id. at 3-4. Claim 27, which is directed to a particular type of antibody rather than a screening method as in the claims set forth above, reads as follows:

27. An antibody which has the TCB domain binding characteristics of monoclonal antibody 5C2E5 (ATCC ______).

On July 1, 1999, before the Board had rendered a decision on Housey's preliminary motion, Berman filed a separate preliminary motion asserting that all of Housey's claims at issue in the interference were unpatentable in view of the prior art, and included twenty-eight exhibits in support of that motion. Berman v. Housey, Inter. No. 104,347, slip op. at 1 (Bd. Pat. App. & Inter. July 12, 1999). The following day, the Board issued an order suspending the original schedule for the filing of preliminary motions, and on July 12, 1999, the Board returned Berman's unpatentability motion unconsidered, stating that Berman failed to comply with prescribed procedures by filing exhibits before the conclusion of the preliminary motion period. Id. at 2. The Board noted, however, that the return of that motion was without prejudice to Berman's refiling the motion in the appropriate manner once the ban on filing further preliminary motions was lifted. Id.

Several months thereafter, an Interference Trial Section Motions Panel granted Housey's preliminary motion, concluding that Berman's claim 64 was barred under § 135(b). Berman v. Housey, Inter. No. 104,347, slip op. at 2-3 (Bd. Pat.App. & Inter. Nov. 10, 1999) ("Berman I"). As a preliminary matter, the Board found that because Berman did not contest that claim 64 was directed to "the same or substantially the same subject matter" as the claims of Housey I and II, and because that claim was made more than one year after the issuance of those patents, claim 64 appeared to be barred under § 135(b). Id. at 5. The Board further determined that because Berman's original claim 27 was not directed to the same or substantially the same subject matter as the relevant claims in Housey I and II, that claim did not provide a basis for Berman to relate back to his original filing date in order to avoid the bar of § 135(b). Id. at 12. In making that determination, the Board rejected Berman's contention that "the decision whether a party was claiming `the same or substantially the same subject matter' ... is governed by the obviousness standard of 35 U.S.C. § 103," which is the standard that also governs whether an application claims the "same patentable invention" for purposes of establishing an interference under 35 U.S.C. § 135(a) and 37 C.F.R. § 1.601(n). Id. at 8. Instead, the Board determined that claim 27 did not enable Berman to avoid the § 135(b) bar under the test set forth by decisions of our predecessor court, including Rieser v. Williams, 45 C.C.P.A. 953, 255 F.2d 419, 422, 118 USPQ 96, 99 (CCPA 1958) (defining the "same or substantially the same subject matter" test under § 135(b) as whether "the essential patentable subject matter is the same" in both the...