Bergendahl v. Sasai
| Decision Date | 29 June 2016 |
| Docket Number | Patent Interference 106,009 |
| Parties | VEIT BERGENDAHL and JAMES A. THOMSON, Junior Party, (Patent 7, 892, 830) v. YOSHIKI SASAI and KIICHI WATANABE, Senior Party, (Application 12/442, 245) Technology Center 1600 |
| Court | Patent Trial and Appeal Board |
Before: RICHARD E. SCHAFER, SALLY GARDNER LANE, and DEBORAH KATZ, Administrative Patent Judges.
JUDGMENT - BD. R. 127(A)
LANE ADMINISTRATIVE PATENT JUDGE.
A decision granting junior party Bergendahl's motion on the basis of priority and denying both senior party Sasai's motion for judgment on the basis of priority and its motion for judgment that the Bergendahl involved claims are unpatentable over prior art has been entered. (Decision on Priority and Other Motions, Paper 258). In view of the Decision, judgment on priority is entered against Sasai.
ORDERED that judgment on priority is entered against senior party Sasai as to Count 1, the sole Count of the interference (Declaration, Paper 1, at 4);
FURTHER ORDERED that claims 1, 5-10, 17 and 18 of Sasai application 12/442, 245, which correspond to Count 1, are FINALLY REFUSED. 35 U.S.C. § 135(a);[1]
FURTHER ORDERED that the parties are directed to 35 U.S.C. § 135(c) and Bd. R. 205 regarding the filing of settlement agreements;
FURTHER ORDERED that a party seeking judicial review timely serve notice on the Director of the United States Patent and Trademark Office. 37 C.F.R. §§ 90.1 and 104.2. See also Bd. R. 8(b). Attention is directed to Biogen Idee MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654-57 (Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated for interference proceedings declared after September 15 2012); and
FURTHER ORDERED that a copy of this judgment be entered into the administrative records of the involved Bergendahl patent and Sasai application.
Decision -Priority and other motions - Bd. R. 121(a)
1. Introduction
The interference was declared on 14 August 2014 between junior party Veit Bergendahl and James A. Thomson (Bergendahl) and senior party Yoshiki Sasai and Kiichi Watanabe (Sasai) (Declaration, Paper 1). 35 U.S.C. § 135(a).[1]
In the Decision on non-priority motions (Decision on non-priority motions, Paper 144), Bergendahl Motion 1 for judgment on the basis that all the involved Sasai claims are unpatentable for failing to comply with the written description and enablement requirement of 35 U.S.C. § 112, 11 and Bergendahl Motion 2 seeking as relief that the current Count, Count 1, be substituted, were denied. The only Sasai Motion, Sasai Motion 1, seeking judgment on the basis that all the involved Bergendahl claims are unpatentable over cited prior art (Sasai Motion 1, Paper 47) and the Bergendahl Motion responsive to that Sasai Motion (Bergendahl Motion 3 [2] Paper 90 seeking to add Bergendahl reissue application 14/579, 493 to the interference) were deferred. (Decision on non-priority motions at 3).
After the Decision on non-priority motions, Bergendahl and Sasai each filed a motion for judgment on the basis of priority of invention (Bergendahl Priority Motion[3], Paper 179 and Sasai Priority Motion, Paper 183). Each party filed an opposition to its opponent s priority motion (Bergendahl Opposition, Paper 230 and Sasai Opposition, Paper 231) and corresponding replies (Bergendahl Reply, Paper 238 and Sasai Reply, Paper 239).
In addition, Bergendahl filed a miscellaneous motion to exclude evidence relied upon by Sasai in the Sasai Priority Motion and the Sasai Opposition to the Bergendahl Priority Motion. (Motion to exclude, Paper 247). Thus we have before us a priority motion from each party as well as the Bergendahl motion to exclude and the non-priority motions that were deferred.[4]
We grant the Bergendahl Priority Motion, deny the Sasai Priority Motion, dismiss as moot the Bergendahl motion to exclude, deny Sasai Motion 1 and deny Bergendahl Motion 3.
II. Findings of Fact
The record supports the following findings of fact, as well as any other findings of fact set forth in this decision, by a preponderance of the evidence.
1. Junior party Bergendahl is involved in the interference on the basis of its patent 7, 892, 830 issued on 22 February 2011 from application 12/016, 066, filed 17 January 2008. (Declaration, Paper 1, at 3).
2. Senior party Sasai is involved in the interference on the basis of its application 12/442, 245, filed 13 July 2009. (Declaration, Paper 1, at 3).
3. Bergendahl identities its real party in interest as the Wisconsin Alumni Research Foundation. (Bergendahl Notice of Real Party, Paper 5).
4. Sasai identifies its real party in interest as RIKEN. (Sasai Notice of Real Party, Paper 12).
5. Count 1 is the sole count of the interference and is claim 1 of the involved Sasai application, which is:
A method of culturing human, pluripotent stem cells, which comprises treating the stem cells with a ROCK (Rho-kinase) inhibitor.
6. Human embryonic stem cells, which may be abbreviated herein as "hES" cells, "hESCs" or "human ES cells", are human, pluripotent stem cells. (Declaration of Palecek, [5] Ex. 2090, at j[ 7).
7. A stem cell that is "pluripotent" has unlimited proliferation capacity. (Exhibit 2090, at 1J6).
8. Sasai claim 1, and thus the Count, includes treating human, pluripotent stem cells with a ROCK inhibitor "without limitation so long as an inhibitor can inhibit the function of Rho-kinase (ROCK)..." (Decision on non-priority motions, Paper 144, at 8, referring to Sasai specification, Ex. 2004, at 12:19-10).
9. Sasai claim 1, and thus the Count, is not construed as requiring ROCK inhibitors that achieve certain benefits disclosed in the Sasai specification, i.e., improved survival rate, proliferation potency and/or differentiation efficiency. (Decision on Motions, Paper 144, at 6-7).
10. the parties were accorded the following beneht as to Count 1 (earliest date for each party in bold):
Bergendahl:
U.S. 60/880, 747, filed 17 January 2007
Sasai:
PCT/GB07/03636, filed 24 September 2007 JP 2007118183, filed 27 April 2007 UK 0710095.1, filed 25 May 2007 JP 2006257780, filed 22 September 2006
11. All the claims of each party correspond to Count 1. (Declaration, Paper 1, at 4).
12. In its priority statement Bergendahl asserts 16 September 2005 as both its earliest corroborated conception date and its earliest corroborated actual reduction to practice date. (Bergendahl Priority Statement, Paper 28, at 1).
13. Bergendahl also asserts 16 September 2005 as its earliest corroborated date on which diligence began. (Bergendahl Priority Statement, Paper 28, at 1).
14. In its priority statement Sasai asserts 4 March 2005 as its earliest corroborated conception date and 2 October 2005 its earliest corroborated actual reduction to practice date. (Sasai Priority Statement, Paper 32, at 1).
15. Sasai asserts 4 March 2005 as its earliest corroborated date on which diligence began. (Sasai Priority Statement, Paper 32, at 1).
III. Discussion
In its priority motion junior party Bergendahl argues that it simultaneously conceived and reduced to practice an invention of the Count on 16 September 2005. Bergendahl further argues that it had additional conceptions coupled with reductions to practice between October of 2005 and April of 2007. (Bergendahl Priority Motion, Paper 179, at 3 and 24) but does not assert diligence.
In its priority motion Sasai argues that it conceived of an embodiment of the Count "prior to" 16 September 2005 and "as early as" 4 March 2005. Sasai argues that it thereafter reduced to practice the embodiment by 4 October 2005. Sasai asserts that it was diligent between 15 September 2005 and 4 October 2005. (Sasai Priority Motion, Paper 183, at 3, 9 and 17).
The Board may take up motions for decision in any order and may take such other action appropriate to secure the just, speedy, and inexpensive determination of the proceeding including deferral of action on an issue until a later point in the proceeding. Bd. R. 125(a). The party filing the motion has the burden of proving that it is entitled to relief requested in the motion. Bd. R. 121(b).
"Priority is generally awarded to the applicant who was first to reduce the invention to practice; however, an applicant who was first to conceive the invention but last to reduce it to practice will be awarded priority if he demonstrates reasonable diligence in his reduction to practice." Cooper v. Goldfarb, 240 F.3d 1378, 1382 (Fed. Cir. 2001) (citing 35 U.S.C. § 102(g)).
We first consider the Bergendahl Priority Motion.
Bergendahl argues that it simultaneously conceived and reduced to practice an invention of the Count on 16 September 2005, a date prior to Sasai's earliest accorded benefit date of 22 September 2006. (Bergendahl Priority Motion 1 at 3, Declaration, Paper 1, at 3).
"The doctrine of simultaneous conception and reduction to practice is somewhat rare but certainly not unknown, especially in the unpredictable arts such as chemistry and biology." Mycogen Plant Science v. Monsanto, 243 F.3d 1316, 1330 (Fed. Cir. 2001), citing Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228-29, (Fed.Cir.l994); Amgen, Inc., 927 F.2d at 1206, ; Smith v. Bousquet, 111 F.2d 157, 159(1940).
To prove conception it must be shown that the inventors formed a definite and permanent idea of the complete and operative invention as it is to be applied in practice. Coleman v Dines, 754 F.2d 353, 359 (Fed.Cir.1985). "Conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to...
To continue reading
Request your trial