Yeda Research & Dev. Co. v. Abbott GmbH & Co.

Citation99 F.Supp.3d 5,114 U.S.P.Q.2d 1859
Decision Date15 April 2015
Docket NumberCivil Action No. 10–1836 RMC
PartiesYeda Research and Development Co., Ltd., Plaintiff, v. Abbott GMBH & Co. KG, Defendant.
CourtUnited States District Courts. United States District Court (Columbia)

99 F.Supp.3d 5
114 U.S.P.Q.2d 1859

Yeda Research and Development Co., Ltd., Plaintiff
v.
Abbott GMBH & Co.
KG, Defendant.

Civil Action No. 10–1836 RMC

United States District Court, District of Columbia.

Signed April 15, 2015


99 F.Supp.3d 7

Amanda K. Antons, Cullen N. Pendleton, Kevin M. Flowers, Matthew C. Nielsen, Marshall, Gerstein & Borun LLP, Chicago, IL, Roger Lowen Browdy, Ronni S. Jillions, Browdy & Neimark PLLC, Washington, DC, for Plaintiff.

Scott Lloyd Smith, Todd R. Walters, Buchanan Ingersoll & Rooney PC, Alexandria, VA, James R. Ferguson, Mayer Brown, LLP, Chicago, IL, John Hamilton Korns, Buchanan Ingersoll & Rooney, PC, Washington, DC, for Defendant.

OPINION

ROSEMARY M. COLLYER, United States District Judge

What does it take to disclose a protein sufficiently so that it can be patented? After 20 years of litigation, the parties are still arguing about it. Abbott GMBH & Co. KG and Yeda Research and Development Co. Ltd. claim competing U.S. patent applications, each based on an earlier-filed foreign patent application. Abbott's application to patent the TBP–II protein was

99 F.Supp.3d 8

filed in Germany on May 9, 1989. Yeda filed its application to patent the TBP–II protein nine days later, on May 18, 1989 in Israel. From that few days' difference in time fortunes might be made. Yeda has been arguing since April 5, 1995 that Abbott's application was incomplete and infirm, while its own application more fully identified the TBP–II protein and is entitled to priority and U.S. patent protection for the next 17 years. Abbott's patent has since expired. Here, Yeda raises serious issues.

The current focus is a May 26, 2010 opinion by the Board of Patent Appeals and Interferences that granted Abbott the benefit of the earlier filing date of its first German application. After thorough consideration of the full administrative record,1 the parties' briefs and accompanying exhibits, and with the benefit of excellent oral argument, the Court will grant Abbott's motion for summary judgment and deny Yeda's motions for summary judgment.

I. OVERVIEW

As stated by the Board of Patent Appeals and Interferences (Board)2 in 2010, “This is an old interference,” i.e., a claim by one inventor that another has interfered with his invention and the claimant was the first to invent. Administrative Record (AR) [Dkt 89–4] (5/26/10 Board Decision)3 at 5961.4 The interference in this case resulted when Yeda asserted that its inventors were the first to disclose a protein5 called the Tumor Necrosis Factor

99 F.Supp.3d 9

Binding Protein–II6 (TBP–II) claimed by Abbott in U.S. Patent No. 5,344,915 (the '915 Patent”). TBP–II was “isolated from the urine of individuals with a fever and from the ascites fluid of individuals with ovarian carcinomas.” Abbott III, 576 F.Supp.2d at 46. TBP–II “binds to, and thereby neutralizes, potentially harmful polypeptides.” Id. at 45.

To prove its priority before the Board and this Court, Abbott relies on application P39 15 072 ('072 Application) to patent TBP–II in Germany, filed on May 9, 1989 by Hans–George LeMaire and three co-inventors, Abbott's predecessors.7 Thereafter, on July 15, 1989, Abbott filed application P39 22 089 ('089 Application) in Germany covering the same protein. On May 4, 1990, Abbott filed an International Patent Application (later designated as a U.S. patent application) claiming the benefit of the filing date of the '>072 Application. On September 6, 1994, the U.S. application matured into the '915 Patent. As described by the Board:

This proceeding had its genesis when Yeda requested an interference with Abbott's ['915 ] patent. Application 07/930,443, Miscellaneous Incoming Letter, filed April 5, 1995. An examiner requested Yeda to make a claim for the purpose of interference. Miscellaneous Office Action, mailed May 15, 1995. Yeda responded by submitting its Claim 67. Application 07/930,443, Amendment filed May 24, 1995. After some additional prosecution, the examiner recommended that an interference be declared. Form 850, attachment to Paper 1.
This interference was declared with Yeda designated as the senior party. Paper 2, p.1. Yeda was accorded the benefit of the filing dates of four earlier applications. The earliest was an Israeli application filed May 18, 1989. Paper 1, Appendix, numbered p.1. Abbott was accorded the benefit of the May 4, 1990, filing date of [the International Patent Application].
During the interference, Yeda filed a ... motion asserting that all of Abbott's claims were unpatentable over certain prior art. Paper 21. Abbott opposed the motion arguing that its claimed subject matter was entitled to the benefit of the filing dates of two German applications under 35 U.S.C. § 119—App lications P 39 22 089(089) and P 39 15 072(072). The filing dates of both applications preceded the date of [the prior art] reference. Abbott argued that because it was entitled to benefit [from the application dates for the '072 Application and the '089 Application], the reference was not prior art to its claims.
A panel of the Board held that Abbott had not established entitlement to the filing dates of the German applications and that its claims were unpatentable over the prior art. In particular, the panel held that the German applications do not have written descriptive support
99 F.Supp.3d 10
for the subject matter claimed. Since Abbott did not have any patentable claims, the panel entered judgment against Abbott. Paper 105. The other preliminary motions filed by the parties were considered moot and left undecided.
On July 21, 2000, Abbott sought judicial review of the board's decision under 35 U.S.C. § 146. Paper 107. Abbott reasserted entitlement to the filing date of the 089 application. Entitlement to the filing date of the 072 application was apparently not asserted in the district court.
On September 15, 2008, the district court held that Abbott's claimed subject matter was described in the 089 application, vacated the panel's decision of unpatentability, and remanded the interference to the board. Paper 110. Yeda's appeal to the Court of Appeals for the Federal Circuit was dismissed for lack of jurisdiction on May 29, 2009. Paper 115.

See 5/26/10 Board Decision [Dkt. 89–4] AR at 5961–62. After remand in 2008, the Board granted Abbott the benefit of the May 9, 1989 filing date of German Application P 39 15 072 ('072 Application), giving it priority over Yeda. Id. at 5963.

This appeal followed. It has its own intricate history, which need not be detailed. During the course of the immediate proceedings, the parties have engaged in discovery, which has amplified the record from that before the Board. In the interim, the Federal Circuit determined that parties can introduce new evidence before the district court in a § 146 interference action, regardless of whether the issue or evidence was presented to the Board. See Troy v. Samson Mfg'g Corp., 758 F.3d 1322, 1325 (Fed.Cir.2014) (reh'g denied ) (“We conclude that the Supreme Court's decision in [Kappos v. Hyatt, ––– U.S. ––––, 132 S.Ct. 1690, 1694, 1700, 182 L.Ed.2d 704 (2012) ] permits new evidence to be admitted without regard to whether the issue was raised before the Board. The Supreme Court held, without qualification, that ‘there are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure.’ ”) Yeda seeks to introduce evidence produced from Abbott in discovery in this case and to obtain a claim construction on a new term. With some legitimacy, Abbott argues that the Federal Rules of Procedure bar Yeda's late evidence. Nonetheless, to provide a complete record for appeal, this Court has considered all of the evidence and arguments submitted by both parties.

II. PATENT AND INTERFERENCE BACKGROUND

Under long-standing U.S. patent law, the first person to conceive the invention is the first inventor, ... provided that when the first to conceive the invention is the last to reduce it to practice, the person who was first to conceive must have exercised reasonable diligence to his own actual or constructive reduction to practice, ‘from a time prior to conception by the other.’ ” Hyatt v. Boone, 146 F.3d 1348, 1351 (Fed.Cir.1998) (quoting 35 U.S.C. § 102(g) prior to 2011 amendment; other citations omitted) (emphasis added).

As a consequence of the principle that the first to invent is granted the patent, “there must be a mechanism for determining who among multiple patent applicants ... was the first to invent the claimed subject matter.” Cytologic, Inc. v. Biopheresis GmbH, 682 F.Supp.2d 1, 4 (D.D.C.2010). For this purpose, 35 U.S.C. § 135 specifically provided for “Interferences,” a “proceeding [ ] principally declared to permit a determination of priority.”

99 F.Supp.3d 11

Minnesota Mining and Mfg. Co. v. Norton Co., 929 F.2d 670, 674 (Fed.Cir.1991). As is the...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT