throbber
The opinion in support of the decision being
`is not binding precedent of the Board.
`entered
`Paper
`
`Filed by: Trial Section Merits Panel
`Box Interference
`Washington, D.C. 20231
`Tel: 703-308-9797
`Fax: 703-305-0942
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Filed
`25 July 2001
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`
`PAT. & T M
`OFFICE
`BOARD OF PATENT APPEALS
`AND INTERFERENCES
`SHMUEL CABILLY, HERBERT L. HEYNEKER, WILLIAM E. HOLMES,
`ARTHUR D. RIGGS and RONALD B. WETZEL,
`Junior Party,
`(Application 07/205,419),
`
`MICHAEL A. BOSS, JOHN H. KENTEN,
`JOHN S. EMTAGE and CLIVE R. WOOD,
`Senior Party
`(Patent 4,816,397).
`
`Patent Interference 102,572 (McK)
`
`Before: McKELVEY, Senior Administrative Patent Judge, and
`SCHAFER and TORCZON, Administrative Patent Judges.
`
`McKELVEY, Senior Administrative Patent Judge.
`
`FINAL ORDER AFTER DISTRICT COURT JUDGMENT
`
`Introduction
`A.
`On 1 June 2001, the board received the following papers
`filed by Cabilly:
`CABILLY REQUEST FOR ASSIGNMENT TO NEW APJ
`ADMINISTRATIVE PATENT JUDGE] (Paper 63).
`
`Genzyme Ex. 1015, pg 445
`
`

`
`2.
`
`3.
`
`4.
`
`Certified copy of a NOTICE OF SETTLEMENT AND JOINT
`REQUEST FOR ENTRY OF SETTLEMENT INSTRUMENTS filed
`on 6 March 2001 in the United States District
`Court for the Northern District of California in
`Genentech, Inc. v. Celltech Therapeutics, Ltd.,
`Civil Action No. C 98-3926 MMC (WDB) (Paper 66).
`Certified copy of an ORDER REGARDING RESOLUTION OF
`INTERFERENCE filed in the district court on
`16 March 2001 (Paper 67).
`Certified copy of a JUDGMENT filed in the district
`court on 16 March 2001 (paper 68).
`
`At some point, the board also received a copy of the docket
`entries in the district court through 16 March 2001 (gaper 65).
`The ORDER REGARDING RESOLUTION OF INTERFERENCE and JUDGMENT
`appear to have been drafted by the attorneys and were thereafter
`presented to the district court for consideration. In drafting
`the order and judgment, it would appear that the attorneys did
`not take into account (1) relevant provisions of 35 U.S.C.
`§§ 135(a) and 146 and (2) binding precedent of the Federal
`Circuit, e.g., Gould v. Quiqq, 822 F.2d 1074, 1079, 3 USPQ2d
`1302, 1305 (Fed. Cir. 1987) and In re Ruschiq, 379 F.2d 990, 154
`USPQ 118 (CCPA 1967). Nevertheless, we will attempt to take
`action consistent with the district court's judgment to the
`extent possible and consistent with law.
`
`Assignment of administrative patent judge (APJ)
`During its pendency before the board, the interference was
`assigned (37 CFR § 1.610) to former Administrative Patent Judge
`Mary F. Downey. Judge Downey recently retired. Accordingly, the
`- 2 -
`
`Genzyme Ex. 1015, pg 446
`
`

`
`interference has been assigned to Senior Administrative Patent
`Judge Fred E. McKelvey. 37 CFR § 1.610(b).
`
`Finding of fact
`The record supports the following findings by at least a
`preponderance of the evidence:
`
`The interference, declared 28 February 1991,
`1.
`involves Cabilly application 07/205,419' versus Boss patent
`4,816,397.
`
`2.
`
`The Cabilly application is owned by Genentech,
`
`The Boss patent is owned by Celltech R&D Ltd.,
`formerly Celltech Therapeutics, Ltd. (Paper 64, page 2).
`The claims of the parties are:
`Cabilly:
`101-134
`a.
`b.
`Boss:
`1-18
`The claims of the parties designated as
`corresponding to the count, and therefore involved in the
`interference (35 U.S.C. § 135(a)), are:
`a.
`Cabilly:
`101-120
`1-18
`b.
`Boss:
`
`We note that the Cabilly application is misidentified as application
`08/205,419 in note 1 on page 1 of a FINAL DECISION entered 13 August 1998
`(Paper 57).
`Cabilly application Paper 12, pages 1-5 (copy attached).
`A count defines the interfering subject matter. 37 CFR § 1.601(f).
`- 3 -
`
`Genzyme Ex. 1015, pg 447
`
`

`
`The claims of the parties designated as not
`corresponding to the count are:
`a.
`Cabilly:
`b.
`Boss:
`
`121-134
`None
`
`On 20 September 1991,. after the interference was
`declared, Cabilly submitted an INFORMATION DISCLOSURE STATEMENT
`(IDS) (Appl'n Papei 17--copy attached) citing prior art not
`previously cited during prosecution before the examiner.
`Insofar as we can tell, the IDS does not appear to
`have been considered by an examiner. Nor is it apparent that the
`examiner has assessed the correctness of allegations In the IDS
`to the effect that certain prior art cited in the IDS is
`"cumulative" to other prior art said to have been considered by
`the examiner.
`
`A final decision (i.e., a final agency action) was
`entered by a merits panel of the board on 13 August 1998.
`Cabilly v. Boss, 55 USPQ2d 1238 (Bd. Pat. App. & Int. 1998)
`(Paper 57).
`
`In its final decision, the board determined that
`Cabilly had failed to sustain its burden of establishing priority
`
`Jurisdiction over the application transfers to the board upon
`declaration of an interference. 37 CFR § 1.614. Hence, there is no reason to
`believe that the examiner would have had occasion to consider papers filed in
`connection with the application after declaration of the interference.
`The merits panel consisted of former Administrative Patent Judges
`Ronald H. Smith and Mary F. Downey (both now retired) and Administrative
`Patent Judge Richard E. Schafer.
`
`Genzyme Ex. 1015, pg 448
`
`

`
`vis-a-vis Boss. Accordingly, the board entered judgment against
`Cabilly.
`
`11. On 9 October 1998, Cabilly timely sought judicial
`review under 35 U.S.C. § 146 by civil action filed in the United
`States Dis trict Court for the Northern District of California
`(district court). Genentech, Inc. v. Celltech Therapeutics,
`Ltd., Civil Action No. C 98-3926 MMC (WDB) (Paper 65, page 2,
`entry 1).
`
`12. On 16 March 2001, the district court entered
`(1) an ORDER REGARDING RESOLUTION OF INTERFERENCE (Paper 67)
`and (2) a JUDGMENT (Paper 68).
`13.
`In its ORDER REGARDING RESOLUTION OF INTERFERENCE,
`the district court determined "that Genen ech is entitled as a
`matter of law to priority over Celltech to the invention
`described by the count" (page 3, lines 27-28). The district
`court's determination appears to have been based on a Cabilly
`draft application, dated 25 February 1983, which (1) is said to
`have been uncovered during discovery and (2) was not presented
`
`We have not proofread the documents drafted by the attorneys for
`consideration by the district court. However, we note at least the following
`error in the ORDER REGARDING RESOLUTION OF INTERFERENCE: on page 2, line 24
`Genentech's issued patent is identified as U.S. Patent 4,816,517 when it
`appears it should have been identified as U.S. Patent 4,816,567. We also note
`at least the following error in the NOTICE OF SETTLEMENT AND JOINT REQUEST FOR
`ENTRY OF SETTLEMENT INSTRUMENTS: on page 1, line 27, the Cabilly application
`is identified as application 07/215,419 when it appears it should been
`identified as application 07/205,419.
`- 5 -
`
`Genzyme Ex. 1015, pg 449
`
`

`
`to, or considered by, the board in entering its final decision on
`13 August 1998.
`In its judgment, the district court "orders
`and adjudges that the following shall occur simultaneously"
`(Paper 64, pages 1-2):
`
`a.
`The United States Patent and Trademark Office
`(USPTO) is directed to vacate the PTO's decision in Cabilly v.
`Boss in Interference 102,572.
`b.
`The USPTO is directed to "revoke and vacate
`United States Patent No. 4,816,397 ***" issued to Boss.
`c.
`The USPTO is directed to "grant and issue to
`Genentech's Inventors (with Genentech as the assignee) with the
`issue date being the same as the date of revocation of United
`States Patent No. 4,816,397, a United States patent having ***
`claims 101-120 that were allowed by the PTO in Genentech's
`pending United States Patent Application No. 07/205,419 ***."
`
`15. A certified copy of the district court's judgment
`was received by the board on 1 June 2001 (Paper 63).
`16. According to Cabilly's request for assignment of a
`new APJ (Paper 63):
`In light of the complexity of the Order accompanying ***
`[the] district court['s] Judgment, the parties ***
`
`See ORDER REGARDING RESOLUTION OF INTERFERENCE, (page 3, lines
`10-26). The parties do not appear to have asked the district court to
`address, and the district court did not appear to have considered, the issue
`of whether Genentech and Cabilly were diligent from the time the interference
`was declared in attempting to find the draft, which is now said to be
`dispositive. We do not address the issue of whether a lack of diligence might
`have been a basis for the district court to have exercised its discretion to
`decline to admit in evidence the draft. See, e.q., Kirschke v. Lamar, 426
`F.2d 870, 165 USPQ 679 (8th Cir. 1970). We will note that if a patent is
`issued to Cabilly, its term will begin to run now and the public has already
`been subject to patents rights of Boss since 1989, and that the interference
`has been pending since 1991.
`
`- 6 -
`
`Genzyme Ex. 1015, pg 450
`
`

`
`respectfully request that after an APJ has been assigned [to
`the interference,] but before the Judgment *** [of] the
`district court is effected, a conference call be scheduled
`so that the parties and the APJ may discuss this matter. -
`
`17. The time for filing an appeal, in this case to. the
`United States Court of Appeals for the Federal Circuit, from the
`judgment of the district court is 30 days. Fed. R. App. P.
`4(a)(1)(A). The time for filing an appeal from the judgment of
`the district court entered 16 March 2001 expired sometime in
`April of 2001.
`
`Discussion
`D.
`As noted earlier, The ORDER REGARDING RESOLUTION OF
`INTERFERENCE and JUDGMENT appear to have been drafted by the
`attorneys and were thereafter presented to the district court for
`consideration. In drafting the order and judgment, we again note
`that it would appear that the attorneys did not take into account
`(1) relevant provisions of 35 U.S.C. §§ 135(a) and 146 and (2)
`binding precedent of the Federal Circuit, e.g., Gould v. Ouiqs,
`822 F.2d 1074, 1079, 3 USPQ2d 1302, 1305 (Fed. Cir. 1987) and In
`re Ruschiq, 379 F.2d 990, 154 USPQ 118 (CCPA 1967). We will
`attempt to take action consistent with the district court's
`judgment to the extent possible and consistent with law.
`
`Order to vacate decision
`The district court's order directs the USPTO (board?) to
`vacate its decision in Cabilly v. Boss in Interference 102,572.
`
`Genzyme Ex. 1015, pg 451
`
`

`
`The judgment does not identify the precise board "decision"
`to be vacated. We believe that the district court sought to have
`the board vacate its final decision awarding priority to Boss. _
`The board's final decision (Paper 57) was entered on 13 August
`1998. Accordingly, an order will be entered vacating the final
`decision entered 13 August 1998.
`
`Order to "revoke and vacate" a patent
`The district court directs the USPTO "to revoke and vacate"
`U.S. Patent 4,816,397, the Boss patent involved in the
`interference.
`Nothing in 35 U.S.C. § 135(a) relating to the board's
`jurisdiction over interferences and nothing in 35 U.S.C. § 146
`relating to judicial review of a decision of the board in
`interference matters, authorizes the board or a court to "revoke
`and vacate" a patent. Section 135(a) provides, however, that
`"[a] final judgment adverse to a patentee from which no appeal or
`other review has been or can be taken or had shall constitute
`cancellation of the claims involved in the patent ***."
`While the matter is not absolutely free from doubt, we have
`construed the district court's judgment as a final decision of
`the district court. The judgment has all the indicia of being
`final in the sense that it rules in favor of Cabilly and against
`Boss. The "judgment" is "set forth on a separate document" as
`
`The only basis of which we are aware for "revoking" a patent would be
`an action by the United States alleging that the patent was procured on the
`basis of a fraud. See, e.g., United States v. Saf-T-Boom Corp., 431 F.2d 737,
`167 USPQ 195 (8th Cir. 1970), and Supreme Court cases cited therein.
`- 8 -
`
`Genzyme Ex. 1015, pg 452
`
`

`
`required by Fed. R. Civ. P. 58. Moreover, as is apparent from
`the ¶ 10 of ORDER REGARDING RESOLUTION OF INTERFERENCE (Paper 67,
`page 3, lines 27-28), the district court held that Genentech
`(i.e., Cabilly) is entitled to priority of invention vis-a-vis
`Celltech (i.e., Boss). .Given that review of the board's priority
`determination was the issue in the civil action under § 146 and
`that issue was resolved in favor of Cabilly, we have construed
`the district court's judgment as being final.
`The time for appeal to the Federal Circuit from the judgment
`of the district court expired sometime in April 2001. A
`certified copy of the district court's judgment was not received
`by the board under 1 June 2001--well after the time for appeal
`had expired. The time for appeal having expired sometime in
`April of 2001, it manifestly follows as a matter of law that the
`claims of the Boss patent designated as corresponding to the
`count, i.e., involved in the interference to use the words of
`35 U.S.C. § 135(a), have been cancelled since sometime in April
`of 2001. The only action which needs to be taken by the USPTO in
`the future is to comply with that part of § 135(a) which
`provides, with respect to cancelled patent claims, that "notice
`of such cancellation shall be endorsed on copies of the patent
`distributed after such cancellation by the Patent and Trademark
`Office."
`
`Genzyme Ex. 1015, pg 453
`
`

`
`Order to grant and issue patent to Genentech
`
`a.
`The attorneys drafted an order for consideration by the
`district court which directs the USPTO to "grant and issue" a
`patent to Cabilly. Under even a most expansive reading of
`35 U.S.C. § 146, nowhere does a district court have jurisdiction
`to order the granting of a patent. What § 146 says is that a
`"[j]udgment of the [district] court in favor of the right of an
`applicant to a patent shall authorize the Director to issue such
`patent on the filing *** of a certified copy of the judgment and
`on compliance with the requirements of law." Similar' language in
`35 U.S.C. § 145 (involving civil actions where the Director is a
`party), has been construed by the Federal Circuit as not
`authorizing a district court to order the Director (then
`Commissioner) to issue a patent. Gould v. Quiqq, 822 F.2d 1074,
`1079, 3 USPQ2d 1302, 1305 (Fed. Cir. 1987). In this particular
`case, compliance with the requirements of law, among other
`things, in this case would involve (1) acting on Cabilly claims
`121-134 which are also present in the Cabilly application
`(35 U.S.C. §§ 131 and 132), (2) issuance of a notice of allowance
`(35 U.S.C. § 151, first paragraph) and (3) timely payment of the
`issue fee required by law (35 U.S.C. § 151, second paragraph).
`
`b.
`Moreover, under well-established principles, a favorable
`decision on judicial review does not mean that the Director may
`
`Genzyme Ex. 1015, pg 454
`
`

`
`not reject claims in an application on the basis of a ground not
`involved in judicial review. See, e.g., In re Ruschiq, 379 F.2d
`990, 154 USPQ 118 (CCPA 1967).
`In this case, it is not clear that an examiner has
`considered additional prior art called to the attention of the
`USPTO by Cabilly after the interference was declared. Upon
`termination of the interference, the application is returned to
`the examiner. At that point the examiner would determine what
`action, if any, might be warranted on the basis of the IDS filed
`by Cabilly. If no further adverse merits action (e.g., a
`rejection) is deemed appropriate by the examiner, then a notice
`of allowance would be issued and Cabilly would be free to pay the
`issue fee.
`
`"Simultaneous" action'
`The district court has ordered that certain action "occur
`simultaneously". The attorneys who presented the draft judgment
`to the district court should have known that they were asking the
`district court (1) to take an action which is for all practical
`purposes not administratively possible, and (2) in effect, to
`mandamus the Director and the board with respect to issues not
`involved in the civil action.
`The claims of the Boss application have now been cancelled
`by operation of law. A patent could not have issued to Cabilly
`until (1) the board's final decision was vacated (which occurs
`
`Ruschiq is binding Federal Circuit precedent. South Corp. v. United
`States, 690 F.2d 1368, 215 USPQ 657 (Fed. Cir. 1982).
`
`Genzyme Ex. 1015, pg 455
`
`

`
`today) and (2) the Boss claims were cancelled (which occurred
`sometime in April of 2001). Basically, the attorneys attempted
`to have the district court superintend the affairs on the USPTO•.
`We cannot imagine that the district court intended to superintend
`the affairs of the USPTO.
`We note that the district court has retained limited
`jurisdiction in this matter. In the event of further proceedings
`in the district court, we recommend that the attorneys consult
`with the Office of the General Counsel of the USPTO so that a
`determination can be made as to whether the Director should
`intervene (§ 146 gives the Director a right to intervene).
`Alternatively, the district court might wish to exercise its
`discretion by inviting the Director to file such papers as the
`district court might deem appropriate to aid it in resolving the
`interference.
`
`Order
`Upon consideration of the relevant record, including:
`
`1.
`
`2.
`
`the CABILLY REQUEST FOR ASSIGNMENT TO NEW APJ
`[ADMINISTRATIVE PATENT JUDGE] (Paper 63);
`the certified copy of a NOTICE OF SETTLEMENT AND
`JOINT REQUEST FOR ENTRY OF SETTLEMENT INSTRUMENTS
`filed on 6 March 2001 in the United States
`District Court for the Northern District of
`California in Genentech, Inc. v. Celltech
`Therapeutics, Ltd., Civil Action No. C 98-3926 MMC
`(WDB) (Paper 66);
`
`- 12 -
`
`Genzyme Ex. 1015, pg 456
`
`

`
`3.
`
`4.
`
`5.
`
`6.
`
`the certified copy of an ORDER REGARDING
`RESOLUTION OF INTERFERENCE filed in the district
`court on 16 March 2001 (Paper 67);
`the certified copy of a JUDGMENT entered in the -
`district court on 16 March 2001 (Paper 68);
`the copy of the docket entries in the district
`court through 16 March 2001 (Paper 65); and
`the INFORMATION DISCLOSURE STATEMENT (Cabilly
`appl'n paper 17),
`
`and for the reasons given, it is
`ORDERED that the request for a conference call with the
`administrative patent judge assigned to the interference is
`denied, without prejudice to a conference call being placed by
`counsel upon receipt of this order.
`FURTHER ORDERED that the FINAL DECISION of the board
`entered in this interference on 13 August 1998 (Paper 57) is
`vacated.
`
`FURTHER ORDERED that, consistent with the judgment of
`the district court (which is now final), judgment on priority as
`to Count 1, the sole count in the interference, is now awarded
`against senior party MICHAEL A. BOSS, JOHN H. KENTEN, JOHN S.
`EMTAGE and CLIVE R. WOOD (Celltech R&D, Ltd.).
`FURTHER ORDERED that senior party MICHAEL A. BOSS, JOHN
`H. KENTEN, JOHN S. EMTAGE and CLIVE R. WOOD is not entitled to a
`patent containing claims 1-18 (corresponding to Count 1) of U.S.
`Patent 4,816,397, issued 28 March 1989, based on application
`06/672,265, filed 14 November 1984.
`
`- 13 -
`
`Genzyme Ex. 1015, pg 457
`
`

`
`FURTHER ORDERED that a copy of this paper shall be made
`of record in files of application 07/205,419 and U.S. Patent
`4,816,397.
`
`FURTHER ORDERED that, no later than 10 August 2001, the
`Clerk shall forward the Cabilly application to the examiner for
`such further action as may be appropriate consistent with the
`views expressed herein, including such action as the examiner may
`deem appropriate with respect to Cabilly claims 121-134 which
`were not involved in the interference.
`FURTHER ORDERED that if there is a settlement
`agreement, attention is directed to 35 U.S.C. § 135(c) and 37 CFR
`§ 1.661.
`
`FRED E. McKELVEY, Senior
`Administrative Patent Judge
`
`RICHARD E. SCHAFER
`Administrative Patent J dge
`
`BOARD OF PATENT
`INTERFERENCES
`
`CHARD TORCZON
`Administrative Pate
`
`dge
`
`Genzyme Ex. 1015, pg 458
`
`

`
`4
`
`102572
`(via fax--without attachments
`and Federal Express--with attachments)
`Attorney for Cabilly
`(real party in interest
`Genentech, Inc.):
`R. Danny Huntington, Esq.
`BURNS, DOANE, SWECKER & MATHIS, L.L.P.
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Tel:
`703-836-6620
`Fax:
`703-836-0028
`Attorney for Boss
`(real party in interest ,
`Calltech R&D, Ltd., formerly
`Calltech Therapeutics, Ltd.):
`Eric S. Walters, Esq.
`MORRISON & FOERSTER LLP
`755 Page Mill Road
`Palo Alto, CA 94304-1081
`Tel:
`650-813-5865
`Fax:
`650-494-0792
`
`Genzyme Ex. 1015, pg 459

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket