Human Genome Sciences, Inc. v. Genentech, Inc., Civ. No. 08-166-SLR.

• Decision Date: 16 December 2008
• Docket Number: Civ. No. 08-166-SLR.
• Citation: 589 F.Supp.2d 512
• Parties: HUMAN GENOME SCIENCES, INC., Plaintiff, v. GENENTECH, INC., Defendant.
• Court: U.S. District Court — District of Delaware

589 F.Supp.2d 512

HUMAN GENOME SCIENCES, INC., Plaintiff, v. GENENTECH, INC., Defendant.

Civ. No. 08-166-SLR.

United States District Court, D. Delaware.

December 16, 2008.

Steven J. Balick, Esquire, John G. Day, Esquire, Tiffany Geyer Lydon, Esquire and Iauren E. Maguire, Esquire of Ashby & Geddes, Wilmington, DE, of Counsel: Richard L. DeLucia, Esquire, John R. Kenny, Esquire and A. Antony Pfeffer Esquire of Kenyon & Kenyon LLP, New York, NY, for Plaintiff.

Philip A. Rovner, Esquire of Potter Anderson & Corroon LLP, Wilmington, DE, of Counsel: Matthew D. Powers, Esquire and Vernon M. Winters, Esquire of Weil, Gotshal & Manges LLP, Redwood Shores, CA; Elizabeth Scotland Weiswasser, Esquire, Peter Sandel, Esquire and Rebecca Fett, Esquire of Weil, Gotshal & Manges LLP, New York, NY, for Defendant.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

Plaintiff Human Genome Sciences, Inc. ("HGS") filed the present action against Genentech, Inc. ("Genentech") on March 25, 2008, seeking review of a Decision on Motions entered on November 28, 2007 and Final Judgment entered February 20, 2008 by the Board of Patent Appeals and Interferences (the "Board") of the United States Patent and Trademark Office ("PTO") in Interference No. 105,361 ("the '361 interference"). (D.I. 1) Genentech filed a motion to dismiss on May 25, 2008. (D.I. 9) For the reasons that follow, the court grants the motion.

II. BACKGROUND

A. Procedural Background

The American patent law system recognizes the first to invent, rather than the first to file. Consequently, there exists a complicated administrative process by which the PTO has jurisdiction in the first instance to determine priority of invention. The process, an "interference," has been described as "tortuous," "arcane," "highly specialized," and "virtually incomprehensible to the uninitiated." Patents and the Federal Circuit, Fourth Edition, Robert L. Harmon, § 15.2 at 724-25 (1999).

At the beginning of an interference, the party that is first to file an application describing and enabling the "count" declared in the interference is designated the "Senior Party," and the second the "Junior Party"; the Junior Party bears the burden of proof during the priority phase. 37 C.F.R. § 41.207(a). "A common two-party interference before the PTO is an administrative proceeding expected to be concluded in 24 months." General Instrument Corp. v. Scientific-Atlanta, Inc., 995 F.2d 209, 211 (Fed.Cir.1993). The first phase in an interference is the preliminary motions phase. Because a party may not raise any issue at a final hearing that was not, but could have been, raised by a preliminary motion, "the preliminary motions which a party files or does not file ... can have far reaching consequences for both the outcome of the interference and subsequent ex parte prosecution." Id. at 212. Consequently, the Federal Circuit has advised that a party's preliminary motions take into account its "long-range strategy with respect to . . . priority and patentability issues in the interference." Id. (alteration in original). Preliminary motions generally are filed to redefine the scope of a contested case, to change the benefit date accorded for the contested subject matter, or for judgment in the contested case. 37 C.F.R. § 41.121(a)(1). "To be sufficient, a motion must provide a showing, supported with appropriate evidence, such that, if unrebutted, it would justify the relief sought. The burden of proof is on the movant." 37 C.F.R. § 41.208(b).

"If the examiner-in-chief's rulings on the preliminary motions do not terminate the interference," General Instrument, 995 F.2d at 212, the interference moves into the priority phase, wherein the Board receives testimony and evidence and decides the ultimate issue of priority of inventorship. A party dissatisfied with the Board's final decision may request reconsideration of that decision, or it may seek judicial review. With respect to the latter course of action, a party may proceed directly to the Federal Circuit for review based on the record before the Board, or it may proceed to a district court for a "hybrid appeal/trial de novo proceeding in which the PTO record is admitted on motion of either party, but it may be supplemented by further testimony." Id. at 212; 35 U.S.C. §§ 141-144, 146. "District court review of an interference proceeding under section 146 is an equitable remedy of long standing." General Instrument, 995 F.2d at 214. As a proceeding sounding in equity, "the district court may, in appropriate circumstances, exercise its discretion and admit testimony on issues even though they were not raised before the Board." Id. Generally, however, for an issue to qualify for evidentiary review in a § 146 proceeding, "more is required than passing reference to the subject during the course of the interference proceeding." Id.

B. Factual Background

HGS is the owner by assignment of the invention disclosed in U.S. Patent No. 6,872,568 ("the '568 patent"). The '568 patent, entitled "Death domain containing receptor 5 antibodies," issued March 29, 2005 to inventors Jian Ni ("Ni") et al., (D.I. 1 at ¶ 7) The '568 patent was filed on May 4, 2000 as a continuation-in-part of U.S. Patent Application No. 09/042,583, filed March 17, 1998, which claims priority to two provisional applications, U.S. Patent Application Nos. 06/040,846 and 60/054,021, filed March 17, 1997 and July 29, 1997, respectively. Defendant is the owner of U.S. Patent Application No. 10/423,448 ("the '448 application"), filed April 23, 2003 and entitled "Apo-2 Receptor." (Id. at ¶ 8)

On August 31, 2005, the Board declared the '361 interference between the '568 patent and the '448 application, and designated two counts.¹ In the declaration notice, the Board accorded Genentech the benefit of a May 14, 1998 filing date, corresponding to an earlier-filed Genentech patent application.² HGS was not accorded an earlier filing date than May 4, 2000, the filing date of the '568 patent. (D.I. 11, ex. 1 at 2) Genentech was thus designated the Senior Party, and HGS the Junior Party. (Id.)

Pursuant to the Board's Standing Order, HGS filed its list of intended motions with the Board on October 20, 2005. HGS requested that the Board authorize it to file motions seeking, inter alia: (1) a motion seeking judgment on priority; (2) a motion for unpatentability of all claims of the '448 application as anticipated under 35 U.S.C. § 102(e) by the '568 patent; and (3) a motion seeking sanctions against Genentech due to alleged misconduct in interfering with the ex parte prosecution of HGS's '568 patent.³ (Id., ex. 2 at 1) HGS did not seek to assert motions for unpatentability on any other grounds, such as obviousness pursuant to 35 U.S.C. § 103. (Id.)

The Board did not authorize HGS's proposed motion for priority, and deferred priority motions "to the second phase of the interference." (Id., ex. 3 at 3) HGS's motion for sanctions was authorized. (Id.) HGS's motion for unpatentability over HGS's involved patent was not authorized. (Id.)

Following oral argument, the Board dismissed HGS's motion for sanctions against Genentech. The Board noted that HGS concurrently submitted a complaint to the PTO's Office of Enrollment and Discipline ("OED"), which is "better suited to addressing matters of potential attorney misconduct occurring during ex parte examination." (Id., ex. 4) That is, "[a]ssuming, without deciding, the truth of the allegations made by HGS, the matters alleged appear to be attorney conduct matters which do not impact the patentability of either HGS'[s] involved patent or Genentech's involved application," rendering OED the more appropriate review body. (Id.) The OED subsequently determined that "insufficient evidence" existed to support a "conclusion that there is probable cause to believe that [Genentech's counsel] intentionally violated any [PTO rules]." (Id., ex. 10)

The Board subsequently considered HGS's arguments that it should be accorded the benefit of several earlier-filed provisional applications and one nonprovisional application,⁴ and issued its Decision on Motions on November 28, 2007. In its decision, the Board noted that HGS, despite having the burden of proof, failed to provide a "clear and direct comparison of the elements of count 1 or count 2 to the disclosures of any of the cited applications," which "is the pivotal issue involved in any motion for benefit[.]" (Id., ex. 5 at 14) The Board noted that "[t]he panel will not make out the movant's case for it by rooting through reams of testimony for the elements of the count." (Id.) The Board proceeded to evaluate HGS's arguments concerning the '846 application, including the opinion of HGS's expert, Dr. Reed, which the Board deemed largely "conclusory." (Id. at 18) Having considered the evidence presented vis-a-vis the disclosure of the '846 application, including HGS's legal arguments and expert testimony, the Board ultimately concluded that HGS had failed to show prior possession of an enabled embodiment of either count.⁵ (Id., ex. 5 at 23)

The Board thereafter set a schedule for the priority phase including a February 6, 2008 due date for HGS' priority motion. (Id., ex. 6 at 2, 6) On December 13, 2007, Genentech filed with the Board a "Request for Consideration" of its "Decision on Motions and/or Order Setting Priority Times." (Id., ex. 15) Genentech requested reconsideration of both orders "to the extent these papers advance this interference to a priority contest." (Id., ex. 15 at 1) Genentech asserted that the Board "overlooked the fact that [HGS'] priority statement fail[ed] to overcome [Genentech's] accorded benefit date of May 14, 1998." (Id., ex. 15 at 2) Specifically: (1) the notice declaring interference stated that HGS was accorded no priority date ("none"); (2) HGS's priority statement did not allege a date or location of corroborated actual reduction to practice of either count; and (3)...