Rapoport v. Dement
| Decision Date | 28 June 2001 |
| Citation | 254 F.3d 1053,59 USPQ2d 1215 |
| Parties | (Fed. Cir. 2001) DAVID M. RAPOPORT, APPELLANT, v. WILLIAM C. DEMENT, MARK R. ROSEKIND, AND JEFFREY L. SCHWIMMER, APPELLEES. 00-1451 |
| Court | U.S. Court of Appeals — Federal Circuit |
Appealed from: U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (Interference no. 102,760) Roger L. Browdy, Browdy and Neimark, P.L.L.C, of Washington, Dc, argued for appellant.
David S. Abrams, Roylance, Abrams, Berdo & Goodman, L.L.P., of Washington, Dc, argued for appellee. With him on the brief was Robert H. Berdo.
Before Clevenger, Rader and Gajarsa, Circuit Judges.
David M. Rapoport ("Rapoport") appeals from a final decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office ("Board") dated February 29, 2000. The real parties in interest in this interference are: (1) New York University ("NYU"), assignee of Rapoport; (2) the Board of Trustees of the Leland Stanford Junior University ("Stanford"), assignee of William C. Dement ("Dement") and Mark R. Rosekind ("Rosekind"); and (3) the Bristol-Myers Squibb Company ("Bristol-Myers"), assignee of Jeffrey L. Schwimmer ("Schwimmer"). Collectively, Dement, Rosekind, and Schwimmer will be referred to herein as "Dement et al. "
The Board awarded judgment of priority as to the sole count of the interference in favor of Dement et al., and further ordered that Dement et al. are entitled to a patent containing claims 1-13 of U.S. Patent Application No. 07/695,325 ("the '325 application"), filed May 3, 1991, and that Rapoport is not entitled to a patent containing claims 1-12 of U.S. Patent Application No. 07/479,693 ("the '693 application"), filed February 14, 1990. We affirm.
The subject matter at issue in this case is a method for the treatment of sleep apnea. Generally, sleep apnea refers to the transient cessation of breathing during sleep. As described by the Board:
Sleep apneas comprise a spectrum of disorders with varying severity and morbidity and are usually classified as being an obstructive, central, or mixed apnea, depending on the presence or absence of respiratory efforts during the periods in which airflow has ceased. Obstructive and mixed apneas occur with greatest frequency with the most familiar being obstructive sleep apnea syndrome in which sporadic recurring collapse of the patient's upper airway occurs during sleep. If the collapse is complete, there is no air exchange at the nose and mouth and breathing is interrupted. The usual result is a partial arousal and a return to normal breathing.
In most instances, patients suffering from sleep apnea have no knowledge or memory of the apnea episodes, but find themselves constantly suffering from fatigue and daytime drowsiness for no apparent reason. Consequently, due to this chronic lack of proper rest, patients who suffer from sleep apnea often exhibit secondary symptoms of anxiety, depression, fatigue, malaise, irritability, anger, hostility, and other similar problems.
The count in this interference relates to the treatment of sleep apnea by administering a therapeutically effective amount of certain azapirone compounds such as buspirone "to a patient in need of such treatment."
On February 12, 1990, Schwimmer filed U.S. Patent Application No. 07/478,820 ("the '820 application"). Claim 1 of the '820 application as originally filed reads in relevant part:
1. A method for treatment of sleep apneas comprising administration of a therapeutically effective regimen of a Formula I azapirone compound or a pharmaceutically effective acid addition salt thereof to a patient in need of such treatment . . . .
There is no dispute that although buspirone is an azapirone compound, the azapirone compounds of Schwimmer's Formula I exclude buspirone. On the same day, Dement, Rosekind, and Schwimmer jointly filed U.S. Patent Application No. 07/479 803 ("the '803 application"). Original claim 1 of the '803 application reads as follows in its entirety:
1. A method for treatment of sleep apneas comprising administration of a therapeutically effective regimen of buspirone or a pharmaceutically effective acid addition salt thereof to a patient in need of such treatment.
Two days later, on February 14, 1990, Rapoport filed the '693 application. Claim 1 of the '693 application reads as follows in relevant part:
1. A method for treatment of sleep apneas comprising administration of a therapeutically effective regimen of a Formula I azapirone compound or a pharmaceutically effective acid addition salt thereof to a patient in need of such treatment . . . .
The azapirone compounds of Rapoport's Formula I include buspirone, and claim 6 of Rapoport's '693 application is specifically directed to buspirone.
On February 12, 1991, Schwimmer filed U.S. Patent Application No. 07/657,332 ("the '332 application") as a continuation of the '820 application, and on May 3, 1991, Dement, Rosekind, and Schwimmer jointly filed the '325 application as a continuation-in-part of the '803 and '332 applications. Original claim 1 of the '325 application reads as follows in relevant part:
1. A method for treatment of sleep apneas comprising administration of a therapeutically effective amount of a Formula I azapirone compound or a pharmaceutically effective acid addition salt thereof to a patient in need of such treatment . . . .
The azapirone compounds of Formula I in the context of the '325 application include buspirone, and claim 7 of the '325 application is specifically directed to buspirone.
On January 10, 1992, an interference was declared, and Dement et al. were accorded the benefit of the February 12, 1990, filing date of the '820 and '803 parent applications and therefore designated as the senior party. Count 1 of the interference, the only count at issue, reads in pertinent part as follows:
A method for treatment of sleep apneas comprising administration of a therapeutically effective amount of a Formula I azapirone compound or a pharmaceutically effective acid addition salt thereof to a patient in need of such treatment . . . .
The azapirone compounds of Formula I in the context of the interference count include buspirone. Claims 1-12 of Rapoport's '693 application and claims 1-13 of the Dement et al. '325 application correspond to the count.
On June 10, 1992, Rapoport filed a Motion for Judgment pursuant to 37 C.F.R. §§ 1.633(a) in which he argued, inter alia, that the subject matter of the count was not patentable to Dement et al., on the grounds that it was anticipated and/or rendered obvious pursuant to 35 U.S.C. §§ 102(a) and/or 35 U.S.C. §§ 103 by a prior art reference authored by Rapoport. This reference, entitled "Buspirone: Anxiolytic Therapy with Respiratory Implications," was published in Family Practice Recertification in September 1989, at pages 32-37 of Vol. 11, No. 9 (Supplement) ("the FPR Publication"). We note that the FPR Publication does not constitute a statutory bar against either Dement et al. or Rapoport, since it was published less than one year before the priority filing date of the '325 and '693 applications. 35 U.S.C. §§§§ 102(a) and 102(b) (1994). However, because the FPR Publication was authored by Rapoport, it can be cited as prior art against Dement et al., but not against Rapoport. 35 U.S.C. §§ 102 (1994); In re Katz, 687 F.2d 450 454, 215 USPQ 14, 17 (CCPA 1982). Dement et al. do not contest the fact that the FPR Publication is a prior art reference that may be cited against them in this interference.
On October 29, 1992, pursuant to 37 C.F.R. §§ 1.602(b), Dement and Rosekind disclosed that they were obligated to assign their rights in the '325 application to Stanford, and Schwimmer disclosed that he was obligated to assign his rights to Bristol-Myers. Approximately eight months later, on June 21, 1993, Dement et al. explicitly stated on the record that Schwimmer was the sole inventor of the use of most of the azapirone compounds covered by the count except for buspirone in the treatment of sleep apnea. On July 9, 1993, Rapoport filed a Second Motion to Accept Belated Filing Of Preliminary Motion Under 37 C.F.R. §§ 1.633(a) ("Rapoport's Motion to Accept Belated Filing"), along with a Motion for Judgment Under C.F.R. §§ 1.633(a) ("Rapoport's Belated Motion for Judgment") arguing that claims in the Dement et al. '325 application are unpatentable under 35 U.S.C. §§ 102(g) and/or §§ 103 over the prior invention of claims 7 and 13 of Dr. Dement, which were invented by a different inventive entity.
On April 12, 1996, the Board rendered a decision which, inter alia, denied Rapoport's June 10, 1992, Motion for Judgment, denied Rapoport's Motion To Accept Belated Filing, and dismissed Rapoport's Belated Motion for Judgment as being untimely. These decisions were adhered to in a decision for reconsideration dated September 6, 1996. The Board rendered its final decision on February 29, 2000.
In its decision dated April 12, 1996, the Board found that: (1) Rapoport had established a conception date of May 13, 1988; (2) Dement was entitled to a 1986 date of conception; and (3) the conception by Dement inures to the benefit of Dement et al. pursuant to 35 U.S.C. §§ 116. Based on these findings, the Board awarded priority of the invention of the interference count to Dement et al. Before this court, Rapoport does not contest either the ultimate priority determination in favor of Dement et al. or the underlying findings by the Board.
Instead, on appeal, Rapoport argues that the Board erred in not finding that all of the Dement et al. claims corresponding to the count are either anticipated by the FPR Publication or rendered obvious by the FPR Publication in combination with admissions allegedly made in the Dement et al. '325 application. Rapoport also argues that it was an abuse of discretion for the Board to deny Rapoport's Motion to Accept Belated Filing and to...
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