Biogen Ma, Inc. v. Japanese Found. for Cancer Research, No. 2014–1525.

• Court: U.S. Court of Appeals — Federal Circuit
• Writing for the Court: DYK, Circuit Judge.
• Citation: 785 F.3d 648,114 U.S.P.Q.2d 1669
• Decision Date: 07 May 2015
• Docket Number: No. 2014–1525.
• Parties: BIOGEN MA, INC., Plaintiff–Appellant v. JAPANESE FOUNDATION FOR CANCER RESEARCH, Bayer Pharma AG, Defendants–Appellees.

785 F.3d 648
114 U.S.P.Q.2d 1669

BIOGEN MA, INC., Plaintiff–Appellant
v.
JAPANESE FOUNDATION FOR CANCER RESEARCH, Bayer Pharma AG, Defendants–Appellees.

No. 2014–1525.

United States Court of Appeals, Federal Circuit.

May 7, 2015.

785 F.3d 649

Edward Anthony Figg, Rothwell, Figg, Ernst & Manbeck, P.C., Washington, DC, argued for plaintiff-appellant. Also represented by Daniel McCallum, Robert Danny Huntington, Seth Edward Cockrum ; Claire Laporte, Donald Ross Ware, Foley Hoag LLP, Boston, MA.

S. Calvin Walden, Wilmer Cutler Pickering Hale and Dorr LLP, New York, N.Y., argued for defendant-appellee Japanese Foundation for Cancer Research. Also represented by Brittany Blueitt Amadi, Washington, DC; Nels Lippert, Tarter Krinsky & Drogin LLP, New York, N.Y.; Paula Joanne Estrada De Martin, Baker, Donelson, Bearman, Caldwell & Berkowitz, PC, New Orleans, LA.

David I. Berl, Williams & Connolly LLP, Washington, DC, argued for defendant-appellee Bayer Pharma AG. Also represented by Thomas S. Fletcher, David M. Krinsky, Bruce Genderson.

Before DYK, SCHALL, and CHEN, Circuit Judges.

Opinion

DYK, Circuit Judge.

Biogen MA, Inc. (“Biogen”) brought suit in district court, pursuant to 35 U.S.C. § 146, to challenge an interference decision by the Patent Trial and Appeal Board (“PTAB” or the “Board”). The Board concluded that patent applicant Walter Fiers was estopped from establishing priority in Interference No. 105,939 (the “'939 interference” or the “third interference”) because he had lost two prior interferences covering the same subject matter. The district court held that it lacked subject matter jurisdiction because the Leahy–Smith America Invents Act, Pub.L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), eliminated district court jurisdiction under 35 U.S.C. § 146 with respect to interferences commenced after September 15, 2012.

785 F.3d 650

The district court transferred this case to this court pursuant to 28 U.S.C. § 1631.

We conclude that we have jurisdiction to consider the district court's jurisdiction; that the district court correctly decided that it lacked jurisdiction under 35 U.S.C. § 146 ; and that the Board's priority decision was not erroneous. We affirm the Board's decision.

Background

Beginning in 1983, a series of interferences were declared between Fiers and Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (collectively, “Sugano”) generally relating to claims to DNA sequences that encode the precursor and/or mature forms of human fibroblast interferon (“hFIF”) proteins, which promote viral resistance in human tissue, see Fiers v. Revel, 984 F.2d 1164, 1165 (Fed.Cir.1993), and in the case of the most recent interference, to claims for the proteins themselves. All of Fiers' applications claimed priority to United Kingdom Patent Application No. GB 8011306, filed on April 3, 1980, while Sugano's applications and patents claimed priority to Japanese Patent Application No. 33931/80, filed on March 19, 1980 (the “Japanese Application”).

The first, Interference No. 101,096 (the “'096 interference” or the “first interference”), declared August 30, 1983, was between Sugano's U.S. Patent Application No. 06/201,359 and Fiers' U.S. Patent Application No. 06/250,609. The count was directed to the DNA sequences coding for hFIF proteins. Fiers moved to add counts directed to hFIF proteins, but this motion was denied. On June 5, 1991, the Board of Patent Appeals and Interferences (“BPAI” or the “Board”) awarded priority to Sugano. We affirmed. See Fiers, 984 F.2d at 1172.

The second, Interference No. 105,661 (the “'661 interference” or the “second interference”), declared March 4, 2009, was between Sugano's U.S. Patent Nos. 5,236,859 and 5,514,567 and Fiers' Application No. 08/471,646. The count was directed to the DNA sequence encoding the mature hFIF proteins, and the Board ordered Fiers to show cause why the interference should continue given that its subject matter was the same as in the first interference. On August 4, 2009, the Board found that Fiers failed to discharge his burden, entering judgment in favor of Sugano. Fiers did not appeal that decision.

Finally, on July 16, 2013, the Board declared the '939 interference between Fiers' U.S. Patent Application No. 08/253,843 (the “Fiers '843 application”), filed on June 3, 1994, and Sugano's U.S. Patent Application No. 08/463,757 (the “Sugano '757 application”), filed on June 5, 1995. The counts were directed to precursor and mature hFIF proteins. Biogen owns the Fiers '843 application. The Japanese Foundation for Cancer Research (“JFC”) owns the Sugano '757 application.¹ The specifications of the patent applications in the '939 interference are largely the same as the specifications of the applications or patents in the prior two interferences.

On July 16, 2013, the Board again ordered Fiers to show cause as to why Fiers should not be estopped from proceeding, given that Fiers lost the prior interferences and the subject matter was again the same as in the prior interferences.

In its response to the order, Fiers argued against applying to the interference two forms of interference estoppel: estoppel

785 F.3d 651

by judgment and estoppel for failure to file a motion. Fiers argued that estoppel by judgment did not apply because his claims to hFIF proteins are patent-ably distinct from the DNA sequences encoding those proteins (the subject matter of the earlier interferences). Fiers submitted several pieces of purported evidence to support his argument. Fiers also argued that estoppel for failure to file a motion did not apply because Fiers had moved in prior interferences to add counts reciting hFIF proteins, and had been barred from doing so by the Board.

Sugano responded that Fiers was properly estopped from pursuing the hFIF protein claims because he had failed to submit sufficient evidence to show that the protein claims were patentably distinct from the lost counts, and that Fiers' failure in its prior motions to follow the Board's procedural rules, as well as its failure to petition for review, also resulted in estoppel.

The Board agreed with Sugano and held that estoppel applied. The Board concluded that Fiers failed to discharge his burden to show patentable distinctness and that Fiers was estopped from continuing the interference by reason of the two earlier interference proceedings. The Board entered judgment in favor of Sugano on October 3, 2013.

On December 2, 2013, Biogen filed a civil action in district court under pre-AIA 35 U.S.C. § 146 to set aside the Board's determination. JFC moved to dismiss the case for lack of subject matter jurisdiction. On May 22, 2014, the district court granted the motion to dismiss, holding that the AIA had eliminated § 146 jurisdiction to review interferences, such as the one here, that were filed after September 15, 2012. The district court transferred the case to this court pursuant to 28 U.S.C. § 1631 so that we could review the Board's decision under pre-AIA 35 U.S.C. § 141.

Discussion

I

A threshold issue is whether we have jurisdiction to determine the correctness of the district court's determination that it lacked subject matter jurisdiction under pre-AIA 35 U.S.C. § 146. JFC contends that the district court's determination that it lacked jurisdiction under § 146 is not reviewable.

In In re Teles AG Informationstechnologien, 747 F.3d 1357 (Fed.Cir.2014), we concluded that we had jurisdiction in a case virtually indistinguishable in principle from this case. In Teles, the district court dismissed a patentee's action brought under 35 U.S.C. § 145 to review a Board ex parte reexamination decision for lack of subject matter jurisdiction. The district court then transferred the case to this court pursuant to § 1631. We held that the dismissal was improper and that the district court should have only transferred the case. Teles, 747 F.3d at 1359–61. Treating the case as though it had been properly transferred, we then proceeded to address the question of the district court's jurisdiction under 35 U.S.C. § 145 and the question of statutory interpretation underlying that issue under a de novo standard. See id. at 1361. We held that amendments to the patent statute had eliminated district court review of actions under 35 U.S.C. § 145 for patent owners (as opposed to applicants) and “affirm[ed] that the district court lacked jurisdiction over the § 145 action.” Id. at 1366.

Since we did not explicitly discuss the basis for adjudicating the district court's jurisdiction in Teles, we find it appropriate to do so here. It is well-established that transfer orders are generally

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not appealable. See Subsalve USA Corp. v. Watson Mfg., Inc., 462 F.3d 41, 47 (1st Cir.2006) (“[E]very court of appeals to have confronted [the issue] has concluded that section 1631 transfer orders are not immediately appealable.”).² We have not been asked, however, to sit in appellate review of the district court's transfer order. We are instead the transferee court, and Biogen, despite its having styled its request as a “remand,” is effectively asking us to retransfer this case to the...