Biogen Ma, Inc. v. Japanese Foundation for Cancer Research
785 F.3d 648
| Fed. Cir. | 2015Background
- Biogen (owner of Fiers’ U.S. application) sought district-court review under pre-AIA 35 U.S.C. § 146 of the PTAB’s judgment in Interference No. 105,939 (the ’939 interference), which held Fiers estopped from proving priority.
- The ’939 interference (declared July 16, 2013) involved claims to precursor and mature human fibroblast interferon (hFIF) proteins; prior interferences in 1983 and 2009 concerned DNA sequences encoding those proteins and resulted in adverse rulings against Fiers.
- The PTAB issued a show-cause ordering Fiers to demonstrate that the protein claims were patentably distinct from the DNA claims adjudicated in the prior interferences; the Board found Fiers failed to meet the burden and entered judgment for Sugano (JFC).
- Biogen filed a § 146 action in district court; the district court dismissed for lack of subject-matter jurisdiction, holding the AIA eliminated § 146 review for interferences commenced after Sept. 15, 2012, and transferred the case to the Federal Circuit under 28 U.S.C. § 1631.
- The Federal Circuit (on transfer) addressed: (1) whether it had authority to decide the district court’s jurisdictional ruling; (2) whether the AIA (and Technical Corrections Act) eliminated district-court § 146 review for interferences declared after Sept. 15, 2012; and (3) whether the PTAB erred in applying interference estoppel by judgment based on patentable indistinctness.
Issues
| Issue | Plaintiff's Argument (Biogen/Fiers) | Defendant's Argument (JFC/Sugano) | Held |
|---|---|---|---|
| Whether the Federal Circuit may review the district court’s dismissal/transfer | Biogen sought retransfer, arguing district court had § 146 jurisdiction and the transfer should be undone | JFC argued the district court’s lack-of-jurisdiction ruling was not reviewable | Court exercised inherent power to determine its own jurisdiction and reviewed the district court’s jurisdictional ruling (transfer proper) |
| Whether the AIA/TCA eliminated district-court review under pre-AIA § 146 for interferences declared after Sept. 15, 2012 | Biogen argued § 3(n)(1) preserved pre-AIA judicial review (including § 146) for applications filed before March 16, 2013 | JFC argued specific AIA/TCA provisions show Congress limited review to pre-AIA § 141 (Federal Circuit) for post-Sept. 15, 2012 interferences | Held that specific AIA § 6(f)(3)(C) and TCA § 1(k)(3) remove district-court § 146 review for interferences declared after Sept. 15, 2012; § 141 review in Federal Circuit is the appropriate avenue |
| Whether the court should retransfer to district court under § 1631 because § 146 applies | Biogen asked retransfer (district court jurisdiction under § 146) | JFC opposed retransfer, contending § 146 no longer applies | Retransfer denied; Federal Circuit retained jurisdiction under § 141 due to AIA/TCA interpretation |
| Whether PTAB erred in finding interference estoppel by judgment (i.e., whether Fiers showed patentable distinctness of protein claims over prior DNA counts) | Biogen argued proteins are functionally distinct and submitted several items (restriction requirement, separate Goeddel interferences, prior Board reversal, expert declaration) | JFC argued Fiers failed to present substantive evidence showing protein claims were not obvious over the DNA counts; estoppel by judgment precludes relitigation | Held PTAB did not err: Fiers failed to submit relevant evidence of patentable distinctness; estoppel by judgment bars Fiers from the protein claims; Board’s judgment affirmed |
Key Cases Cited
- Fiers v. Revel, 984 F.2d 1164 (Fed. Cir.) (background precedent on earlier interference decision)
- In re Teles AG Informationstechnologien, 747 F.3d 1357 (Fed. Cir. 2014) (transfer and review of district-court jurisdictional dismissal)
- Hoover Co. v. Coe, 325 U.S. 79 (1945) (historical discussion that §§ 141 and 146 are alternative, mutually exclusive review paths)
- Woods v. Tsuchiya, 754 F.2d 1571 (Fed. Cir. 1985) (defines interference estoppel by judgment)
- In re Deckler, 977 F.2d 1449 (Fed. Cir. 1992) (preclusion where claims are not patentably distinct)
- RadLAX Gateway Hotel, LLC v. Amalgamated Bank, 132 S. Ct. 2065 (2012) (statutory-construction principle: specific governs the general)
- Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563 (Fed. Cir. 1996) (restriction requirement is for administrative convenience)