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` Paper 611
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`BoxInterferences@uspto.gov
`Tel: 571-272-4683 Filed: 5 February 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`BIOGEN MA INC.
`Junior Party
`Patent 8,399,514 B2,
`
`v.
`
`FORWARD PHARMA A/S
`Senior Party
`Application 11/576,871.
`
`
`Patent Interference No. 106,023 (McK)
`Technology Center 1600
`
`
`Before FRED E. McKELVEY, SALLY GARDNER LANE, and
`DEBORAH KATZ, Administrative Patent Judges.
`
`McKELVEY, Administrative Patent Judge.
`DECISION ON BIOGEN MOTION 6
`Revival of Application 12/526,296
`37 C.F.R. § 41.125(a)
`
`I. Biogen Motion 6
`Biogen Motion 6 (Paper 221) seeks entry of an order reviving abandoned
`
`patent application 12/526,296 (“the ʼ296 application”) inter alia for the purpose of
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`Page 1 of 23
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`Biogen Exhibit 2063
`Coalition v. Biogen
`IPR2015-01993
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`entry of an amendment (Ex 2009) to claim in the ʼ296 application benefit of the
`filing date of U.S. Provisional Application 60/888,921 (Ex 2006A) (“the ʼ921
`provisional application”). Paper 221, page 1:8–12. Upon entry of the amendment,
`the ʼ296 application again would become abandoned.
`
`According to Biogen, the ʼ296 application became unintentionally
`abandoned without containing a specific reference to the ʼ921 provisional
`application.
`
`Forward Pharma timely opposed. Paper 542.
`
`Biogen timely replied. Paper 561.
`II. Witnesses
`Biogen sought, and obtained from the Board, authorization to file Biogen
`
`Motion 6. Paper 196, pages 9–13.
`
`In addition to documentary evidence, Biogen submitted direct declaration
`testimony of attorneys:
`(1) Thomas L. Irving,
`(2) John M. Covert,
`(3) Adriane M. Antler, and
`(4) Theresa Devlin.
`Cross-examination of attorneys Irving, Covert, and Antler took place live
`
`before one member of the panel. Cross-examination of attorney Devlin took place
`in Cambrige, Massachusetts with two judges of the panel participating via
`telephone.
`
`The exhibits for direct declaration testimony and cross are as follows:
`
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`Page 2 of 23
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`Witness
`Thomas L. Irving
`John M. Covert
`Adriane M. Antler
`Theresa Devlin
`
`
`
`Table 1—Witnesses
`Direct Testimony
`2051
`2052
`2053
`2054
`
`Cross-examination
`2074
`2073
`2072
`2075
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`1
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`13
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`III. Facts
`Biogen is involved in the interference by virtue of U.S. Patent 8,399,514 B2
`
`(“the ʼ514 patent”) (Ex 2001A). Application 13/372,426 (“the ʼ426 Application”)
`(Specification: Ex 2007A) matured into the ʼ514 patent.
`
`The ʼ514 Patent claims priority of:
`(1) the ʼ296 application (Specification: Ex 2004A);
`
`
`(2) PCT/US2008/001602 (Ex. 2005A); and
`
`
`(3) the ʼ921 Provisional Application (Ex 2006A).
`
`
`Ex. 2001A, page 1 (60) and (63).
`
`Two other applications are relevant to issues raised in Biogen Motion 6:
`
`
`(4) application 13/767,014 (“the ʼ014 application”) filed as a
`continuation of the ʼ426 application, and
`(5) application 14/718,962 (“the ‘962 application”).
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`In table form, the applications in filing date order are:
`Table 2—Relevant Applications
`Application
`Provisional Application 60/888,921
`PCT/US2008/001602
`Application 12/526,296
`Application 13/372,426 issued as U.S. Patent
`8,399,514 B2 and involved in the interference
`Application 14/767,014
`Application 14/718,962
`
`Filing Date
`8 February 2007
`8 February 2008
`13 January 2011
`13 February 2002
`
`14 February 2013
`21 May 2015
`
`
`A“specific reference” to the ʼ921 provisional application does not appear in
`
`the ʼ296 application. Accordingly, under 35 U.S.C. § 119(e), Biogen is not entitled
`to benefit of the ʼ921 Provisional Application.
`
`To overcome the lack of a “specific reference,” Biogen has filed a motion to
`(1) revive the ʼ296 application based on unintentional delay and (2) amend the
`ʼ296 application to make a “specific reference” to the ʼ921 provisional application.
`Paper 221.
`
`The Director is authorized by Congress to establish procedures to revive an
`unintentionally abandoned application for patent upon petition by the applicant for
`patent. 35 U.S.C. § 27.
`
`Among other requirements, any petition must contain a statement that the
`entire delay in filing a reply from the due date of the reply until the filing of a
`grantable petition was unintentional. 37 C.F.R. § 1.137(b)(4). In addition to the
`statement, the Director may require additional information. Id.
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`Because the revival issue arose in this interference, any petition to revive is
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`decided by the Board. 37 C.F.R. § 41.121(c)(2).
`
`Rather than reply to an Office Action, Biogen abandoned the ʼ296
`application in favor of the ʼ426 application. Paper 221, page 9:19–20.
`
`We understand that attorneys for Biogen contend that Biogen would not
`have abandoned the ʼ296 application had the relevant attorneys been aware that the
`ʼ296 application did not contain a “specific reference” to the ʼ921 provisional
`application.
`
`We further understand that attorneys for Biogen believed that they had
`claimed benefit, the belief said to have been based in part on documents issued by
`the USPTO and set out below in date order, including:
`Table 3—USPTO Issued Documents
`Application
`Document
`
`Confirmation No.
`ʼ296
`5197 371
`Formalities Letter
`Electronic
`Acknowledgement
`Recipt
`Filing Receipt
`Confirmation No.
`5197 371
`Acceptance Letter
`Published
`Application
`Filing Receipt
`Updated Filing
`Receipt
`
`Date
`
`2010/09/13
`
`
`2011/01/13
`
`2011/02/01
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`2011/02/01
`
`2011/05/12
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`2012/03/29
`2012/04/24
`
`Exhibit
`
`2055
`
`
`2056
`
`2015
`
`2021
`
`2022
`
`2016
`2026
`
`
`ʼ296
`
`ʼ296
`
`ʼ296
`
`ʼ296
`
`ʼ426
`ʼ426
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` 5
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`2065
`2060
`2061
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`2062
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`2071
`2064
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`2068
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`ʼ014
`ʼ014
`ʼ014
`
`ʼ014
`
`ʼ071
`ʼ014
`
`ʼ962
`
`BIB Data Sheet
`Filing Receipt
`Updated Filing
`Receipt
`Updated Filing
`Receipt
`Printed Publication
`Corrected Filing
`Receipt
`Updated Filing
`Receipt
`
`2013/02/14
`2013/04/03
`2013/08/13
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`2013/08/19
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`2013/11/28
`2015/03/13
`
`2015/09/14
`
`
`During prosecution of the applications listed in Table 2, at different times
`
`Biogen was represented by three law firms:
`(1) Finnegan, Henderson, Farbow, Garrett & Dunner;
`(2) Sterne, Kessler, Goldstein & Fox; and
`(3) Jones Day.
`Thomas L. Irving, at attorney at Finnegan, Henderson, testified on direct that
`Finnergan, Henderson caused the ʼ921 provisional application to be filed in the
`USPTO on 8 Feburary 2007. Ex. 2051, ¶ 4.
`Within one year, personnel at Finnegan, Henderson caused the PCT
`application to be filed in the USPTO. Id. The record of the USPTO show that the
`PCT application was filed on 7 February 2008.
`Attorney Irving believes personnel at Finnegan, Henderson intended to
`claim benefit of the ʼ921 provisional application in the PCT application. Id.;
`Ex. 2051, ¶ 9; Ex. 2074, page 30:3–11.
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`In due course, the ʼ296 application was filed as the U.S. national stage
`application. Ex. 2051, ¶ 6.
`Attorney Irving now recognizes that the claim for benefit of the provisional
`application “was not made in [the ʼ296 application in] the manner seet forth in
`37 C.F.R. § 1.78.” Ex. 2051, ¶ 7.
`According to attorney Irving, the failure to make the necessary claim for
`benefit was “inadvertent.” Id.
`Further according to attorney Irving, “any delay in making . . . [a] claim
`priority claim in the specific manner set forth in Rule 78 was unintentional.”
`Ex. 2051, ¶ 9.
`Still further according to attorney Irving, the USPTO “recognized the
`priority claim in the ʼ296 application, as shown in . . . [a] Notification of Missing
`Requirments . . . dated September 13, 2013.” Ex. 2051, ¶ 8; Ex. 2055.1
`There was considerable testimony as to what steps may have been taken, and
`by whom, to be sure that a proper claim for priority of the ʼ921 provisional
`application had been made.
`Cross-examination confirms that attorney Irving was the Finnegan,
`Henderson “partner in charge” of the prosecution of the ʼ921 provisional
`application, the PCT application, and the ʼ296 application. Ex. 2051, ¶ 3;
`Ex. 2074, page 9:3–14.
`
`
`1 In Table 3, the document is listed as Confirmation No. 5197 371 Formalities
`Letter.
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`Attorney Irving “supervised Finnegan’s filing and prosecution of the three
`applications. Ex. 2051, ¶ 3.
`Based on cross-examination, the Board understands that attorney Irving
`directly oversaw prosecution work perfomed by Finnegan, Henderson associates,
`including (1) attorney Konstantin Linnik and (2) attorney Arthur S. Garrett. Also
`involved at various times were (3) attorney Ernest Chapman, (4) attorney Richard
`Burgujign, and (5) attorney Leslie McDonell. Ex. 2051, page 9:8–page 17–16.
`Attorneys Linnik, Garrett, Chapman, Burgujign, and McDonell did not
`testify.
`During the relevant 2007–2011 time period, attorney Irving agrees that he
`and other Finnegan, Henderson personnel consulted with personnel at Biogen.
`Ex. 2051, page 23:18–page 24:9.
`Apart from attorney Theresa Devlin, who did not begin work at Biogen until
`2013, no other Biogen employee testified.
`On direct, attorney Irving, while referencing Finnegan, Henderson, testified
`as to his knowledge not the knowledge of a juristic Finnegan, Henderson entity.
`Ex. 2051, page 31:8–14.
`While attorney Irving cannot testify as to the state of mind of other
`personnel at Finnegan, Henderson, we nevertheless highly credit the following
`cross-examination testimony:
`[I[f anything was amiss, if anybody would have had some idea
`that priority hadn't been properly claimed, they would have come
`to see me. That would have been brought to my attention.
`And, sir, I don't have great recollection of all the facts here, some
`I have no recollection, but I'll tell you, I darn well would
`remembered if there was some big mess like that. Those are the
`kind of things you remember in life, not the things that go well,
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`but the things that go amiss. And I have absolutely no
`recollection that anyone came to me at any time until 2015, when
`evidently this challenge was made to the priority of the PCT, I
`guess it was, and the provisional. I have no recollection. No one
`ever came to me, sir.
`
`***
`If there had been a failure . . . to claim priority, somebody would
`have been in my office giving me the full detail so that we could
`have taken corrective action or done whatever we could then.
`That's how, sir, I run clients.
`
`***
`It's unthinkable that they wouldn't have come to talk to me, sir.
`I told you it was unthinkable if someone had had a problem they
`wouldn't have come to me. It is unthinkable, sir.
`
`Ex. 2074, page 31:21–page 33:18.
`It appears that prosecution of the ʼ296 application as transferred by Biogen
`from Finnegan, Henderson to Sterne, Kessler no later than 13 January 2011.
`Ex. 2051, ¶ 3; Ex. 2074, page 19:14–20.
`John M. Covert, an attorney at Sterne, Kessler, testified on direct that Sterne,
`Kessler took over prosecution of the ʼ296 application no later than 13 January
`2011. Ex. 2052,¶ 3.
`
`During the period 2011 through 2014, attorney Covert was “prosecution
`counsel” representing Biogen in connection with the applications relevant to issues
`before us. Id.
`
`According to attorney Covert, Sterne, Kessler caused an “inventor
`declaration” to be filed in the ʼ296 application. Ex. 2052, ¶ 5.
`
`The declaration made a claim for priority of the ʼ921 provisional application.
`Id.
`
`The ʼ296 application was filed on 13 January 2011.
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`There may be some confusion at to the accuracy of the 13 January 2011
`transfer date from Finnegan, Henderson to Sterne, Kessler. On cross-examination,
`Forward Pharma attempted to determine a precise transfer date. Ex. 2073,
`page 38:14–page 39:18. A transfer occurred. However, a precise transfer date is
`probably not important. In our view, all individuals who testified would have had
`the same beliefs as to failure to provide a “specific reference” apart from a precise
`transfer date.
`
`According to attorney Covert, Sterne, Kessler “claimed priorty to the
`provisional application.” Ex. 2052, ¶ 7. He thought the priority claim had been
`made. Ex. 2073, page 48:6–14.
`
`Further according to attorney Covert, any failure to claim priority of the ʼ921
`provisional application in the ʼ296 application “in the manner set forth in Rule 78
`. . . was inadvertent.” Id.
`
`Still further according to attorney Covert, “any delay in filing an . . .
`[a]mendment . . . [in] the ʼ296 application . . . was unintentional.” Ex. 2052, ¶ 15.
`
`In due course on 13 February 2012, Sterne, Kessler caused to be filed in the
`USPTO the ʼ426 application as a continuation of the ʼ296 application. Ex. 2052,
`¶ 8.
`According to attorney Covert, the ʼ296 application went abandoned on
`
`10 July 2012. Ex. 2052, ¶ 11.
`
`Our reading of attorney Covert’s direct testimony is that he believed a claim
`for priority of the ʼ921 provisional application has been properly made. Ex. 2052,
`¶ 9.
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`His belief was based in part on documents received by Sterne Kessler from
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`the USPTO indicating that a claim for priority of the ʼ921 provisional application
`had been made. See, e.g., Ex. 2016 and Ex. 2026, mentioned in Table 3.
`
`The ʼ426 application matured into the involved ʼ514 patent on 19 March
`2013. Ex. 1001A, page 1.
`
`Before issuance of the involved ʼ514 patent, Sterne, Kessler caused to be
`filed in the USPTO the ʼ014 application as a continuation of the ʼ426 application.
`Ex. 2052, ¶ 16.
`
`A USPTO issued filing receipt indicated a claim for priority of the ʼ921
`provisional application. Ex. 2060.
`
`On cross-examination, attorney Covert confirmed that he was “directly
`involved in the prosecution of the ʼ296 application” and “was ultimately
`supervising [the prosecution of] these applications.” Ex. 2073, page 12:4–9 and
`page 13:22.
`
`Attorney Covert testified that other Sterne, Kessler personnel also worked on
`prosecution, including at least (1) attorney Marsha Rose Gillentine, (2) patent
`agent Ute Splittgerber. Ex. 2073, page 12:14–16 and page 16:8-12.
`
`In attorney Covert’s opinion, attorney Gillentine knew how to claim priority
`consistent with Rule 78. Ex. 2073, page 18:2–15.
`
`We highly credit the italized portion of the following cross-examination
`testimony of what attorney Gillentine would have done had she noticed that a
`claim for priority of the ʼ921 application had not been made:
`Q. Okay. And you can't rule out that in fact . . . [attorney]
`Gillentine did go back and did observe that there was no
`preliminary amendment for the ʼ296 application making such a
`claim for priority; correct?
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`A. I couldn't rule that out, but, you know, if she had seen it, I
`would imagine she would have immediately amended the
`application and put in this cross-reference.
`
`Q. But now you're speculating, right, because you don't know
`what she did or didn't do?
`
`A. Well, I've speculated to every one of your questions so far.
`
`Q. I'm just trying to establish you have no personal knowledge
`of whether she did or didn't go back and observe that there is in
`fact no preliminary amendment in the '296 file containing a claim
`to priority; correct?
`
`A. So I do not have personal knowledge of what she was
`thinking.
`
`Q. And therefore you can't rule out that she did in fact notice that
`there is no preliminary amendment in the '296 file with a
`claim to priority to the U.S. provision[al]; correct? You can't rule
`it out?
`
`A. I can't rule it out, but if Marsha had seen it, she would have
`corrected it.
`
`
`Ex. 2073, page 23:7–page 24:11. Attorney Covert’s impression of what an
`employee under his supervision would have done is entitled to be considered
`given his relationship with attorney Gillentine.
`
`On redirect, attorney Covert adhered to his view that he “had no reason to
`believe that we had not perfected the claim [for priority of the ʼ921 provisional
`application].” Ex. 2073, page 61:10–11.
`
`Attorney Covert further testified that:
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`My expectation would be that Marsha and Ute would have come
`to me to address an issue such as not perfecting the claim of
`priority. Marsha and Ute typically exhibited good attention to
`detail, and we just would have made sure that
`something like this was -- was taken care of.
`Ex. 2073, page 62:8–13.
`
`In June of 2014, prosecution of the ʼ014 application was transferred
`by Biogen from Sterne, Kessler to Jones Day. Ex. 2053, ¶ 4; Ex. 2072,
`page 11:10–11.
`
`Adriane M. Antler, an attorney at Jones Day, represented Biogen in
`applications claiming benefit of the involved ʼ514 patent. Id.
`
`The ʼ014 application was filed as a continuation of the ʼ426 application.
`
`Jones Day caused the ʼ962 application to be filed in the USPTO as a
`continuation of the ʼ014. Ex. 2053, ¶ 8; Ex. 2072, page 16:1–2.
`
`Like, prior counsel Jones Day received notices from the USPTO indicating
`that a claim for priority of the ʼ921 provisional application had been made.
`Ex. 2053, ¶ 10; Ex. 2072.
`
`
`In addition to attorney Antler, associate Jones Day attorney Martha Bergauer
`“was involved.” Ex. 2072, page 14:1.
`
`Attorney Bergauer did not testify.
`
`According to attorney Antler, Jones Day personnel had no “occasion to go
`back and look at the chain [of applications] and see if there was a failure to perfect
`claim for priority [of the ʼ921 provisional application].” Ex.2072, page 18:5-11.
`Attorney Theresa Devlin is employed as a patent attorney by Biogen.
`Ex. 2054, ¶ 1.
`
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`Attorney Devlin is an in-house Biogen patent counsel who says she
`reviewed the prosecution history of the involved ʼ514 patent, as well as this
`interference. Ex. 2054, ¶ 4; Ex. 2075, page 9:5–21.
`According to attorney Devlin, the prosecution history was consistent with a
`claim for priority of the ʼ921 provisional application as set out in various
`documents issued by the USPTO. Id.; Ex. 2015, Ex. 2016, Ex. 2022, and
`Ex. 2026.
`Further according to attorney Devlin, “any delay in seeking to . . . enter an
` . . . [a]mendment into the ʼ296 application was . . . unintentional from the . . .
`[declaration] of this interference through the October 23, 2015 . . . date of . . .
`[Biogen Motion 6] to revive.” Ex. 2054, ¶ 11.
`Constance Yeung, at Biogen, was responsible for the ʼ514 patent prior to the
`time attorney Devlin assumed that responsibility. Ex. 2075, page 10:1–3.
`Cara Lowen, a supervisor of a prosecution group at Biogen, may also have
`had some responsibility for prosecuting the involved ʼ514 patent. Ex. 2075,
`page 10:15–page 11:15.
`
`Attorney Devlin dealt with Jones Day attorney Antler in connection with
`prosecution of the involved ʼ514 patent and its continuations. Ex. 2075,
`page 12:17–25.
`
`She also had occasion to deal with attorney Covert of the Sterne, Kessler
`firm. Ex. 2075, page 13:4–23.
`
`With respect to any claim for priority of the ʼ921 provisional application,
`attorney Devlin testified on cross:
`And I can say, since I took over the portfolio, and actually since
`I've been at Biogen, nobody ever questioned the priority claim,
`
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`so my impression was that nobody knew, and I certainly didn't
`know after April 2013 [about any failure to claim priority of the
`ʼ921 provisional application].
`
`Ex. 2075, page 17:20–24. See also Ex. 2075, page 26:1–5 where attorney
`Devlin further testified that based on the file history, “it seems reasonable to
`. . . [her] today that a claim . . . [for] priority was made.”
`IV. Analysis
`The issue before us is whether Biogen has established by a preponderance of
`
`the evidence that it unintentionally abandoned the ʼ296 application without
`realizing that it had failed to properly claim benefit of the ʼ921 provisional
`application.
`
`Based on testimony of four witnesses—testimony we find credible—we
`have little difficulty finding that at the time the ʼ296 application was abandoned
`(10 July 2012) personnel at Biogen and personnel at Sterne, Kessler had not
`realized that a proper claim for priority had not been made.
`
`The failure to properly ensure a “specific reference” in the ʼ296 application
`to the ʼ921 provisional application was nothing more than an inadvertent human
`error. Perfection is not a characteristic of human behavior. Williams v. Russell,
`419 F.2d 1092, 1094 (6th Cir. 1969)(“[l]awyers in cases of this kind are going to
`make mistakes, and it is unavoidable unless we expect perfection of human nature,
`and that we cannot expect”); United States v. Kahaner, 317 F.2d 459, 485 (2d Cir.
`1963)( “Absolute perfection in trials will not be attained so long as human beings
`conduct them”).
`In the course of human activities, including patent application prosecution,
`errors occur. For that reason, there are provisions in the Patent Law to correct
`
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`errors, including (1) unintentional abandonment, (2) unintentional failure to pay a
`maintenance fee, (3) certificate of correction, and (4) reissues—to name a few.
`The record fails to reveal that the error was in any way intentional. Indeed, it
`would border on incredible to believe that a registered patent attorney/agent would
`intentionally fail to make the “specific reference” or, that if a registered patent
`attorney/agent later discovered a failure to make the “specific reference,” that the
`attorney would play ostrich and ignore the failure. In this respect, we highly credit
`the testimony of attorney Irving (in practice since 1977) and attorney Covert (in
`practice since 1994), both of whom stated that if any failure to claim priority would
`have been discovered by an associate working under their direction that the
`associate immediately would have been in their office reporting the failure. Both
`attorneys were familiar with employees under their direction and we find that
`based on their association with those employees can legitimately form an opinion
`as to what the employees would have done had the error been detected.
`
`The fact of the matter is that the failure to present a “specific reference” was
`not discovered until it became an inter partes issue in this interference. Before the
`issue was raised in the interference, no one responsible for the failure was aware
`that any inadvertent failure had occurred. Once the failure came to light, Biogen
`took reasonable steps to correct the error using available USPTO remedies.
`We find that the abandonment without a “specific reference” was
`unintentional.
`We also find “that the entire delay in filing the required reply from the
`due date until the filing of a grantable petition . . . was unintentional.” 37 C.F.R.
`§ 1.137(b)(4).
`
`Forward Pharma opposes granting the motion. Paper 542.
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`To establish unintentional abandonment, Biogen relies heavily on
`
`documentation issued by the USPTO—documentation which indicates that Biogen
`was claiming priority of the ʼ921 provisional application.
`
`According to Forward Pharma, Biogen’s reliance on the documentation
`“does not prove unintentional delay.” Paper 542, page 2:18–19.
`
`We are under the impression that registered practitioners may not fully
`appreciate the significance—or lack thereof—of the kind of documentation relied
`upon by Biogen. The documentation simply acknowledges information provided
`by Biogen to the USPTO and in no way should be considered a finding that the
`USPTO reviewed the documentation to determine whether a claim for priority had
`been perfected. See, e.g., MPEP § 216: MPEP § 201.08; In re Shaw, 202 USPQ
`285, 292 (Comm’r Pat. 1978); Dynamic Drinkware, LLC v. National Graphics,
`Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (the USPTO does not examine priority
`claims unless necessary, and therefore there is no basis to presume that a reference
`patent is necessarily entitled to the filing date of its provisional application, citing
`MPEP § 211.05(I)(A) (2014)); In re NTP, Inc., 654 F.3d 1268, 1278 (Fed. Cir.
`2011) (USPTO does not make priority determinations during examination as a
`matter of course); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305
`(Fed. Cir. 2008) (“examiners do not make priority determinations except where
`necessary”).
`
`Attorneys and others acting on behalf of Biogen, based on documentation
`received from the USPTO, had no basis for assuming that the USPTO had
`determined that a “specific reference” had been made in the ʼ296 application to the
`ʼ921 provisional application. Neverthless, the documentation—at least in the
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`minds of those acting on behalf of Biogen—would be consistent with the fact that
`a benefit claim had been made that had been acknowledged by the USPTO.
`
`The USPTO documentation does not establish that those acting on behalf of
`Biogen made, or did not make, an error in failing to provide the necessary “specific
`reference.” Nevertheless, for reasons set out above, an error was indeed made and
`we find that the error was simply an inadvertent human error.
`
`Forward Pharma maintains that Biogen failed to prove its case by a
`preponderance of the evidence via testimony of individuals having first-hand
`knowledge of the facts. Paper 542, page 2:20–page 6:4.
`
`For example, Forward Pharma notes that Biogen failed to call as witnesses
`the following individuals who are characterized as “key proseutors who were
`substantively involved in the prosecution of the ʼ296 application” Paper 542,
`page 4:1–2): :
`(1) Ernest Chapman (Finnegan, Henderson);
`(2) Marsha Rose Gillentine (Sterne, Kessler);
`(3) Ute Splittgerber (Sterne, Kessler);
`(4) Constance Yeung (Biogen in-house counsel); and
`(5) Carol Loeschorn (Biogen in-house counsel).
`Paper 542, page 4:3–17.
`
`Biogen called as witnesses three patent attorneys, partners in their respective
`law firms, who were responsible at different times for prosecution of the chain of
`applications releavant to the issue before us. In other words, Biogen called the
`patent attorneys who “were in charge” of the prosecution. It is true that those
`patent attorneys may have assigned work to associates under their direct or indirect
`responsibility.
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`While it may be true a stronger case might have been made had the five
`
`above-identified witnesses been called, the attorneys who testified on behalf of
`Biogen had sufficient first-hand knowledge of the prosecution details to satisfy us
`that an inadvertent error had been made, and that no one responsible for the
`relevant prosecution discovered the error until it was uncovered during this
`interference.
`Biogen was under a burden to make out its case under a preponderance of
`
`the evidence standard—not beyond a reasonable doubt as required in criminal
`matters where perhaps the testimony of the five attorneys might have been
`necessary. Forward Pharma is asking that Biogen put on a perfect case. But, a
`perfect case is not necessary. Walker v. Bailey, 245 F.2d 486, 491 (CCPA 1957)
`(“The issue here, however, is not whether Bailey has presented a perfect case, but
`whether he has presented a sufficient one.”); Environ Products Inc. v. Furon Co.,
`215 F.3d 1261, 1267 (Fed. Cir. 2000) (trials must be fair, not perfect). Biogen has
`put on a sufficient case.
`
`Forward Pharma also maintains that the testimony of the witnesses called by
`Biogen “should not be given weight.” Paper 542, page 6:6. We disagree and, in
`fact, give the testimony considerable weight.
`
`Attorney Irving’s testimony is said to be entitled to no weight for a variety
`of reasons. Paper 542, page 7:4–page 8:2
`
`Mr. Irving “offered no testimony that he drafted, revised or viewed any
`paper submitted during the ʼ296 prosecution.” Paper 542, page 7:4–5. He testified
`that associates at Finnegan, Henderson were assigned prosecution duties, that none
`of the associates discovered any error, and that if an error had been discovered it
`would have been called to his attention. We understand that in law firms partners
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`routinely assign work to associate attorneys.
`
`According to Forward Pharma, Mr. Irving’s testimony with respect to
`attorney Chapman is undercut because he was not the partner supervising attorney
`Chapman. Paper 542, page 7:14–17. Attorney Irving testified that he supervised
`attorney Arthur S. Garrett. Ex. 2074, page 10:8 and page 11:17. He also testified
`that he did not remember whether attorney Chapman was directly involved in the
`prosecution. Id, at page 11:20–22. Ultimately attorney Irving testified that
`attorney Chapman reported to attorney Garrett. Id., at page 42:17–19.
`
`Attorney Irving testified that he could not recall the name of any individual
`at Biogen “with whom he allegedly dealt regarding the prosecution, even though
`he was the ‘partner in charge of the client.’” Paper 542, page 7:18–20. His lack of
`recollection would not prove or disprove that an error was made in failing to make
`the needed “specific reference.”
`
`According to Forward Pharma, attorney Irving “was not . . . aware that
`prosecution responsibility for the ʼ296 patent application had been transferred to
`Sterne Kessler . . . .” Paper 542, page 7:21–page 8:2. His lack of awareness would
`not prove or disprove an error in failing to make the needed “specific reference.”
`
`Forward Pharma attacks the testimony of attorney Covert on a variety of
`fronts. Paper 542, page 8:7–page 9:4.
`
`Attorney Covert is said to have admitted that attorney Gillentine and patent
`agent Splittgerber were “directly involved” in the prosecution of the ʼ296
`application and that they would “have first hand knowledge of what they did and
`what they knew.” Paper 542, page 8:7-9. What we find significant is that attorney
`Covert testified that if attorney Gillentine had discovered the failure, she would
`have corrected the error. Ex. 2073, page 23:13–15 (“if she had seen it, I would
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`imagine she would have immediately amended the applicaton and put in this cross-
`reference”); page 24:10–11 (“if Marsha had seen it, she would have corrected it”).
`We have no reason to doubt that patent agent Splittgerber would have done
`likewise.
`
`While unusual for us to adopt a party’s argument, in this case we adopt the
`arguments in Biogen Reply 6 (Paper 561, page 6:13–page 8:17) as adequately and
`satisfactorily responding to Forward Pharma’s attack on the credibility of the
`Biogen witnesses (Paper 542, page 7:4–page 11:9). Biogen’s arguments are
`consistent with our independent fact-finding set out earlier in this opinion.
`
`Forward Pharma alleges that Biogen has n
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