`entered today is not binding precedent of the Board.
`
`Filed by: Trial Section Merits Panel
`Box Interference
`20231
`washington, D.C.
`Tel: 703-308-9797
`Fax: 703-305-0942
`
`Filed
`25 July 2001
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper "]:~(!!""'
`
`MAILED.
`
`JUL 2 5 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),
`
`v.
`
`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
`
`A.
`
`Introduction
`
`On 1 June 2001, the board received the following papers
`
`filed by Cabilly:
`
`1.
`
`CABILLY REQUEST FOR ASSIGNMENT TO NEW APJ
`[ADMINISTRATIVE PATENT JUDGE]
`(Paper 63) .
`
`Merck Ex. 1015, pg 616
`
`
`
`I '
`
`•
`
`•
`
`2. 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).
`3. Certified copy of an ORDER REGARDING RESOLUTION OF
`INTERFERENCE filed in the district court on
`16 March 2001 (Paper 67) .
`4. 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 (paper 65) .
`
`The ORDER REGARDING RESOLUTION OF INTERFERENCE and JUDGMENT
`
`ap~ear 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. Quigg, 822 F.2d 1074, 1079, 3 USPQ2d
`
`1302, 1305 (Fed. Cir. 1987) and In re Ruschig, 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.
`
`B.
`
`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
`
`-
`
`Merck Ex. 1015, pg 617
`
`
`
`'.
`
`..
`
`•
`
`•
`
`interference has been assigned to Senior Administrative Patent
`
`Judge Fred E. McKelvey.
`
`37 CFR § 1.610(b).
`
`c.
`
`Finding of fact
`
`The record supports the following findings by at least a
`
`preponderance of the evidence:
`
`1.
`
`The interference, declared 28 February 1991,
`
`involves Cabilly application 07/205,419 1 versus Boss patent
`
`4,816,397.
`
`2.
`
`The Cabilly application is owned by Genentech,
`
`Inc.
`
`3.
`
`The Boss patent is owned by Celltech R&D Ltd.,
`
`formerly Celltech Therapeutics, Ltd. (Paper 64, page 2).
`
`4.
`
`The claims of the parties are:
`
`a. Cabilly:
`
`101-134 2
`
`b.
`
`Boss:
`
`1-18
`
`5.
`
`The claims of the pa.rties designated as
`
`corresponding to the count, 3 and therefore involved in the
`
`interference (35 U.S.C. §. 135(a)), are:
`
`a. Cabilly:
`
`101-120
`
`b.
`
`Boss:
`
`1-18
`
`We note that the Cabilly application is misidentified as application
`0~/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
`
`-
`
`Merck Ex. 1015, pg 618
`
`
`
`•
`
`6.
`
`•
`
`The claims of the parties designated as not
`
`corresponding to the count are:
`
`a. Cabilly:
`
`121 134
`
`b.
`
`Boss:
`
`None
`
`7.
`
`On 20 September 1991,. after the interference was
`
`declared, Cabilly submitted an INFORMATION DISCLOSURE STATEMENT
`
`(IDS)
`
`(Appl'n Paper 17--copy attached) citing prior art not
`
`previously cited during prosecution before the examiner.
`
`8.
`
`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 1n 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. 4
`
`9.
`
`A final decision (i.e., a final ·agency action) was
`
`entered by a merits ·panel5 of the board on 13 August 199$.
`
`Cabilly v. Boss, 55 USPQ2d 1238 (Bd. Pat. App. & Int. 1998)
`
`(Paper 57) .
`
`10.
`
`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 ~ith 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.
`
`- 4
`
`-
`
`Merck Ex. 1015, pg 619
`
`
`
`•
`
`•
`
`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 Di~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 INTERFERENCE6 (Paper 67)
`
`and (2) a JUDGMENT (Paper 68).
`
`13.
`
`In its ORDER REGARDING RESOLUTION OF INTERFERENCE,
`
`the district court determined "that Genentech 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 4,816,5~7. 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 07/2Q5,419.
`
`- 5
`
`-
`
`Merck Ex. 1015, pg 620
`
`
`
`'.
`
`•
`
`•
`
`to, or considered by, the board in entering its final decision on
`
`13 August 1998. 7
`
`14.
`
`In its judgment, the district court 11 0rders
`
`and adjudges that the following shall occur simultaneously 11
`
`(Paper 64, pages 1-2):
`
`The United States Patent and Trademark Office
`a.
`(USPTO) is directed to vacate the PTO's decision in Cabilly v.
`Boss in Interference 102,572.
`b.
`The USPTO is directed to 11 revoke and vacate
`United States Patent No. 4,816,397 *** 11
`issued to Boss.
`c.
`The USPTO is directed to 11 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 ***
`
`11
`
`\
`
`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***
`
`(page 3, lines
`See ORDER REGARDING RESOLUTION OF INTERFERENCE,
`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, ~, 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
`
`Merck Ex. 1015, pg 621
`
`
`
`•
`
`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.
`
`D. Discussion
`
`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. Quigg,
`
`822 F.2d 1074, 1079, 3 USPQ2d 1302, 1305 (Fed. Cir. 1987) and In
`
`~~~~~, 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.
`
`1.
`
`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.
`
`- 7
`
`Merck Ex. 1015, pg 622
`
`
`
`•
`
`•
`
`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.
`
`2. 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. 8 Section 135(a) provides, however, that
`
`n [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, ~. United States v. Saf-T-Boom Corp., 431 F.2d 737,
`167 USPQ 195 (8th Cir. 1970), and Supreme Court cases cited therein.
`
`- 8 -
`
`Merck Ex. 1015, pg 623
`
`
`
`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 11 notice
`
`of such cancellation shall be endorsed on copies of the patent
`
`distributed after such cancellation by the Patent and Trademark
`
`Office. 11
`
`- 9 -
`
`Merck Ex. 1015, pg 624
`
`
`
`•
`
`3.
`
`•
`
`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 i·ssue a patent. Gould v. Quigg, 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).
`
`Moreover, under well-established principles, a favorable
`
`decision on judicial review does not mean that the Director may
`
`b.
`
`- 10 -
`
`Merck Ex. 1015, pg 625
`
`
`
`not reject claims in an application on the basis of a ground not
`
`involved in judicial review. See, ~' In re Ruschig, 379 F.2d
`
`990, 154 USPQ 118 (CCPA 1967) . 9
`
`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.
`
`4.
`
`"Simultaneous" action··
`
`The district court has ordered that certain action "occur
`
`simultaneously 11
`
`•
`
`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
`
`9
`Ruschig is binding Federal Circuit precedent. South Corp. v. United
`States, 690 F.2d 1368, 215 USPQ 657 (Fed. Cir. 1982).
`
`- 11 -
`
`Merck Ex. 1015, pg 626
`
`
`
`today) and (2) the Boss claims were cancelled (which occurred
`
`•
`
`Gometime in April of 2001) . Basically, the attorneys attempted
`
`to have the district court superintend the affairs on the USPT~.
`
`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.
`
`E.
`
`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 -
`
`Merck Ex. 1015, pg 627
`
`
`
`•
`
`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(cid:173)
`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),
`
`3.
`
`4.
`
`5.
`
`6.
`
`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 upo~ receipt of this order.
`
`FURTHER ORDERED that the FINAL DECISION of the board
`
`ent·ered 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 CLIVER. 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 -
`
`Merck Ex. 1015, pg 628
`
`
`
`•
`
`•
`
`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
`
`BOARD OF PATENT
`APPEALS AND
`INTERFE~ENCES
`
`14 -
`
`Merck Ex. 1015, pg 629
`
`
`
`•
`
`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:
`Fax:
`
`703-836-6620
`703-836-0028
`
`Attorney for Boss
`(real party in interest .
`Calltech R&D, Ltd., formerly
`Calltech Therapeutics, Ltd.):
`Eric B. Walters, Esq.
`MORRISON & FOERSTER LLP
`755 Page Mill Road
`Palo Alto, CA 94304-1081
`
`Tel:
`Fax:
`
`650-813-5865
`650-494-0792
`
`- 15 -
`
`Merck Ex. 1015, pg 630