Cell Genesys v. Applied Research Systems Ars Hold., 05-12448-MLW.
| Decision Date | 13 August 2007 |
| Docket Number | No. 05-12448-MLW.,No. 04-11810-MLW.,05-12448-MLW.,04-11810-MLW. |
| Citation | 499 F.Supp.2d 59 |
| Parties | CELL GENESYS, INC., Plaintiff v. APPLIED RESEARCH SYSTEMS ARS HOLDING, N.V., Defendant Applied Research Systems ARS Holding, N.V., Plaintiff v. Cell Genesys, Inc, and Transkaryotic Therapies, Inc., Defendants. |
| Court | U.S. District Court — District of Massachusetts |
Steven B. Kelber, Arnold & Porter LLP, Washington, DC, Jill Brenner Meixel, T. Christopher Donnelly, Donnelly, Conroy & Gelhaar, LLP, Boston, MA, for Plaintiff.
Kevin M. Flowers, Mathew C. Nielsen, Michael F. Borun, Sandip H. Patel, William K. Merkel, Cullen N. Pendleton, Bradford P. Lyerla, Marshall, Gerstein & Borun LLP, Chicago, IL, Charles L. Gholz, Frank J. West, Oblon, Spivak, McClelland, Maier & Neustadt, P.D., Alexandria, VA, for Defendants.
These consolidated cases are appeals from a decision of the Board of Patent Appeals and Interferences (the "Board"), which is part of the Patent and Trademark Office (the "PTO"), pursuant to 35 U.S.C. § 146. Cell Genesys, Inc. ("CGI") asserts that the Board erred in finding that some of the claims in its U.S. Patent Application No. 08/102,390 (the "'390 application") were invalid and, therefore, Applied Research Systems ARS Holding N.V.'s ("ARS") U.S. Patent No. 5,272,071 (the "'071 patent") did not interfere with those claims. ARS asserts that the Board erred in finding any of CGI's claims in the '390 application to be valid.
After the completion of discovery, the parties made written submissions to the court in support of their respective positions. ARS also filed motions in limine seeking to exclude: deposition testimony from witnesses who did not provide evidence to the Board by affidavit or deposition; documents that were not submitted to the Board; and expert opinions that were not disclosed in the report of Dr. Thea Tlsty ("Dr. Tlsty") which was provided to ARS during the period for discovery in this case. A hearing on the motions in limine was held on January 14, 2007.
For the reasons described in this Memorandum, ARS' motions in limine are meritorious. A § 146 proceeding in a United States District Court is primarily intended to provide an opportunity for further, live testimony by witnesses who presented affidavits or depositions to the Board, which may not receive live testimony, so that the credibility of those witnesses can be better judged. As a § 146 case is an equitable proceeding, the court has the discretion to allow testimony by witnesses who did not present evidence to the Board if it is in the interests of justice to do so. However, the relevant statutes generally require that all evidence available through the exercise of due diligence be presented to the expert Board, which has primary responsibility for determining interference issues.
In this case, the new witnesses proffered to the court, and the related documents, would have been available to CGI for presentation to the Board if CGI had exercised due diligence in seeking them. However, CGI did not. Rather, it relied exclusively on an affidavit an attorney, which the Board, for well-articulated reasons, found not to be credible. In these circumstances, it would be contrary to the interests of justice to allow CGI to present the disputed new evidence to this court.
In addition, ARS correctly contends that CGI is seeking to introduce expert opinions of Dr. Tlsty that were not, as required by Federal Rule of Civil Procedure 26(a)(2)(B), disclosed during discovery, either initially or in any supplementary expert report. CGI has neither shown that this failure to disclose was substantially justified nor that it was harmless as required by Federal Rule of Civil Procedure 37(c)(1). Therefore, to the extent that Dr. Tlsty's opinions go beyond those that were timely and properly disclosed, they are being excluded.
In view of the foregoing, ARS' motions in limine are being allowed. As a result, the parties are being ordered to revise their submissions to address the merits of these cases based solely on the admissible evidence.
This appeal arises from interference number 105, 114 (the "'114 interference") before the Board. The 105,114 interference followed an earlier interference proceeding, number 103,737 (the '737 interference"). Both interferences involve a dispute for priority between ARS and CGI.
ARS owns the '071 patent, which was issued on December 21, 1993, and consists of 58 claims. The '071 patent discloses and claims certain methods, constructs, and cell lines relating to recombinant proteins and covers methods of modifying the proteins encoded by, and synthesized from, genes.
CGI filed the '390 application consisting of 112 claims, on August 5, 1993. CGI alleges that the '390 application contains claims covering the same or similar methods as those claimed in ARS' '071 patent.
The parties' dispute was first presented to the Board in the '737 interference. That interference was never resolved. On March 28, 2003, the Board redeclared the '737 interference as the '114 interference. In the '114 interference, the Board addressed three issues: (1) what inventions, if any, ARS' '071 patent and CGI's '390 application actually claimed; (2) whether those inventions, once construed, were sufficiently similar as to "interfere;" and (3) who the rightful inventor or inventors were. The '114 interference proceeding lasted 15 months. Each party filed numerous motions, memoranda, and exhibits. Each party also submitted witness declarations, and transcripts and video of the cross-examination of its adversary's witnesses.
The Board held a hearing on February 26, 2004. It issued its decision on June 24, 2004. Canvassing the prior art, the Board invalidated Claims 1, 2, 5-7, 9-20, 22, 23, 25, 26, 28-30, 32-39, 52-54 and 57 of ARS' '071 patent and Claims 105 and 107-112 of CGI's '390 application. See Opinion of the Board (hereinafter "Board") at 36-112. The Board then compared the remaining claims in ARS' '071 patent to Claim 106 of CGI's '390 application and found that they did not interfere with each other and, therefore, did not present an interference-in-fact. Id. at 126-40.
The Board reviewed various pieces of prior art, including matters referred to as: Japan,1 Kaufman I,2 Raibaud,3 Nasmuth I,4 Nasmuth II,5 Smithies,6 Cid,7 and Thomas.8 See id. at 37-86. Of particular relevance to the instant proceeding is the Japan reference, a patent issued in Japan on August 29, 1989. The Japan reference describes a method for:
activating a prokaryotic microorganism to express a gene of its genome encoding a protein no, normally expressed by said prokaryotic microorganism, and/or for increasing the level of expression of a gene of a prokaryotic microorganism's genome encoding a protein normally expressed by said prokaryotic microorganism.
Id. at 80. The Board compared the Japan reference to Claims 107-109 of CGI's '390 application, which it construed as follows:
The methods of Claims 107-109 comprise inserting a DNA construct by homologous recombination into the genome of a mammalian cell in proximity to a target gene within the genome of said cell to stimulate or enhance expression of the target gene,
wherein the target gene encodes (1) a protein not normally expressed in said cell (Claims 107 & 109), or (2) a protein normally expressed in said cell (Claim 108); and wherein said DNA construct comprises (a) an amplifiable gene (Claim 107, 108 and 109), a regulatory sequence (Claim 107, 108 and 109), or both (Claim 107, 108 and 109) and (b) DNA homologous with DNA in a region of the genome in proximity to the target gene (Claim 107, 108 and 109).
Board at 35-36 (emphasis in original).
Acknowledging that the Japan reference focused on prokaryotic cell lines and that Claims 107-109 referred to eukaryoticmammalian-cell lines, id. at 80-82, the Board nevertheless concluded that applying the technique patented in the Japan reference to a eukaryotic cell line would have been obvious to an individual ordinarily skilled in the relevant art at the time of CGI's '390 application. Id. at 86.
Based on its review of the teachings of the prior art references, the Board concluded that:
[P]ersons having ordinary skill in the art would have been motivated to make and use inventions encompassed by Claims 1, 2, 5-7, 9-20, 22, 23, 25, 26, 28-30, 32-39, 52-54, 56 and 57 of ARS's '071 patent and Claims 105 and 107-112 of Genesys's Application 08/102,390 with reasonable expectation of success. Therefore we conclude that the subject matter defined by Claims 1, 2, 5-7, 9-20, 22, 23, 25, 26, 28-30, 32-39, 52-54, 56, and 57 of ARS's '071 patent and Claims 105 and 107-112 of Genesys's Application 08/102,390 prima facie would have been obvious to persons having ordinary skill in the art and unpatentable under 35 U.S.C. § 103 in view of the combined teachings of Japan, Kaufman I, Thomas and Smithies, optionally further in view of Kaufman II.
Id. at 87 (emphasis in original).
Following the Board's decision that Claims 107-09 of its '390 application were anticipated by the Japan reference, CGI had two options. It could have deferred contesting the decision that the Japan reference anticipated its claims until the "priority" phase of the proceeding or it could have sought to antedate the Japan reference pursuant to the procedures of 37 C.F.R. § 1.131 ("Rule 131"). See LeVeen v. Edwards, 57 U.S.P.Q.2d 1416, 1420-21 (Bd.Pat.App. & Interf.2000). If a party invokes Rule 131 and does not succeed in antedating the prior art, its claims may be held unpatentable and its application may be adjusted by the PTO accordingly. Id.
CGI elected to attempt to antedate the Japan reference in an effort to save Claims 107-109. Board at 86. To antedate prior art a party must show that it conceived of and reduced to practice its patent claims prior to the effective date of the prior art reference, which is the date...
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