DEEN et al.v.NI et al.

Board of Patent Appeals and Interferences

Oct 29, 2003

08959382 (B.P.A.I. Oct. 29, 2003)

This document is not binding precedent of the Board
Paper 66
Filed by: Trial Section Merits Panel
Mail Stop Interference
P. 0. Box 1450
Alexandria, VA 22313-1450
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFF-ICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
KEITH CHARLES DEEN,
MARK R. HURLE, PETER YOUNG,
and KONG B. TAN,
Juniof Party, MAILED
(Patent 6,013,476)
V. OCT 2 9 2003
PAT & TM. OFFICE
RAN NI, BOARD OF PATENT APPEALS
AND INTER--------
GUO-LIANG YU, PING FAN, and
REINER L. GENTZ,
Senior Party,
(Application 09/095,094).
Patent Interference No. 104,784
Before: SPIEGEL, LANE, and TIERNEY, Administrative Patent Judges.
LANE, Administrative Patent Judg
DECISION ON REQUEST FOR RECONSIDERATION AND FINAL JUDGMENT
1. Introduction
Deen has filed a paper entitled "DEEN RESPONSE TO ORDER TO SHOW CAUSE"
("the Response") (Paper 65). Deen argues that "judgment should not be entered against it
because the decision on preliminary motions ("the decision") (Paper 62) is in error and should be
reversed" (Paper 65 at 2). Thus, Deen's response to the order to show cause (Paper 64) is, in
effect, a request for reconsideration of our decision on preliminary motions. We GRANT the
request for reconsideration to the extent that we have considered the arguments raised by Deen in
the response. However, we do not modify the decision.
11. Discussion
A. Request for reconsideration
When seeking reconsideration of a panel decision at final hearing (37 CFR § 1.655(a)), a
party should specify what points the panel overlooked or misapprehended in rendering the
decision. Charlton v. Rosenstein, http://www.uspto.gov/web/offices/dcom/bpai/its/104148.pdf,
6-7, (BPAI (ITS) 2000).
Deen argues that there are two points where the decision is in error. In particular, Deen
argues that:
(1) The decision failed to recognize that Deen's proposed count "provides a better
basis for deciding priority in that it is broader than the existing count" and "is better supported by
Deen's best proofs, namely its provisional application" (Paper 65 at 2), and
2
(2) Deen is entitled to benefit of its provisional applicatio&ý because Deen's
disclosure of "a genetic fragment of a new tumor necrosis factor receptor (TNFR) from which
that TNFR could be, and eventually was, produced, entitled Deen to the benefit of the filing date
of its provisional application." According to Deen, "[t]he Board's error in this respect arose from
its failure to recognize" that the testimony of Ni witness Dr. Chirmaiyan was discredited upon
cross-examination by Deen. In particular, Deen argues that Dr. Chinnaiyan's testimony "was
discredited because Dr. Chinnaiyan's conclusions (as an expert in death domain-containing
TNFR's) were based on the absence of multiple death domains in the sequence disclosed in
Deen's provisional application" ( Paper 65 at 2-3) (emphasis in original).
Deen's points are directed to areas where it disagrees with the decision. However, Deen
has not explained what we misapprehended or overlooked in rendering the decision.
The substime count
In particular, regarding Deen's first point, the decision addressed why Deen's
preliminary motions to substitute or add Deen's proposed count were denied. The decision
stated:
(Paper 62 at 4):
Deen has not shown why it is necessary to substitute or add a count having
the breadth of the proposed count in view of its proffer of proof. Moreover, Deen
has not shown how the disclosure of the nucleotide sequence contained in its
provisional application amounts to a constructive reduction to practice of an
embodiment within the scope of the proposed count. Accordingly, Deen has not
sufficiently shown why it is necessary to substitute or add the Deen proposed
count and we do not substitute or add the proposed count.
Application 60/041,796, filed 2 April 1997.
3
A further explanation of why Deen's preliminary motions to substitute or add the
proposed count were denied appears within the decision. (Paper 62 at 13-24).
Dr. Chinnaivan's testimon
As to Deen's second point, the decision addressed Dr. Chinnaiyan's cross-examination
testimony regarding TNFR death domains. The decision stated (Paper 62 at 18-19):
Deen argues that we should not accept the testimony of Dr. Chinnaiyan.
In particular, Deen argues that Dr. Chinnaiyan's declaration testimony is
contradicted by Dr. Chirmaiyan's cross-examination testimony that... (FF 35)t'l:
(2) most TNFRs do not have death domains...
... However ... Dr. Chirmaiyan did not testify in his declaration that all
TNFRs have death domains. Our understanding of Dr. Chinnaiyan's testimony
is that it is necessary to characterize the intracellular domain to determine
activity of a potential TNFR. Dr. Chinnaiyan's testimony indicates that it would
be necessary to identify a death domain in order to characterize a TNFR as
apoptosis inducing. Since no death domain is identified in the TR7 fragment, the
fragment cannot be characterized as having apoptosis inducing activity.
Moreover, our determination that Deen did not sufficiently show that its provisional
application provided a constructive reduction to practice within the scope of either Count I or
2 "IFF 35" refers to finding of fact 35 of the decision which reads:
35. On cross-examination, Dr. Chinnaiyan testimony
indicated, inter alia, that:
(1) Most TNFRs do not have death domains (Exh.
2013 at 23), and
(2) even though there are exceptions (at least one
where a TNFR has only one CRD[cysteine rich domain]), most
TNFRs have multiple CRDs. Accordingly, the presence of
multiple CRI)s increases one's confidence that a TNFR has been
discovered. (Exh. 2001 at 37-50).
4
Deen's proposed count was not based solely on Dr. Chinnaiyan's testimony. As we stated in the
decision "Deen has not directed us to evidence sufficient to show that one skilled in the art would
have recognized that the fi7agment disclosed in the Deen provisional was in fact a TNFR
fragment" (Paper 62 at 23). Deen had the burden of proof but did not meet its burden in its
preliminary motions. 37 CFR § 1.637(a).
Furthermore, Dr. Chinnaiyan's testimony that one skilled in the art would not have
recognized the Deen provisional fragment as a fragment of a TNFR was not based solely on his
observation that the fragment did not contain a death domain. Dr. Chinnaiyan testified that other
indicators of a TNFR, e.g., multiple CRDs, were not present in the fragment (Paper 62 at 11-12
and 19). Dr. Chinnaiyan's cross-examination testimony highlighted that not all TNFRs have all
the indicators. However, overall, Dr. Chinnaiyan's testimony indicated that one skilled in the art
could not have reasonably predicted a TNFR based on the fragment found in the Deen
provisional application since insufficient indicators were present.
B. Request for hearing
Deen has indicated that it will not present any evidence on the issue of priority (Paper 64
at 2). Thus, the only issue before us is whether to modify our decision on preliminary motions.
As noted above, Deen has not directed us to any points that we misapprehended or overlooked in
rendering the decision.
Nonetheless, Deen states that "it is the preference of Deen to have an opportunity to
appear before the Board to present oral argument at a final hearing" (Paper 65 at 3).
We do not exercise our discretion to conduct a hearing in the circumstances before us.
Conducting a hearing where there is nothing new to consider would not be in the interest of
5
securing "the just, speedy, and inexpensive determination" of the interference. 37 CFR § 1.601.
To the extent that cur-rent practice may be interpreted as requiring a final hearing with briefing
for purposes of "finality",' we deem the hearing on preliminary motions (see Paper 60) to be that
"final hearing."
111. Conclusion
In response to the order to show cause, Deen states that judgment should not be entered
against it because the decision was in error and should be reversed. Deen has not shown the
decision to be in error and we do not modify our decision. Accordingly, it is appropriate to enter
final judgment against Deen.
IV. Order
Upon consideration of the record of the interference and for reasons given, it is
ORDERED that Deen's request for reconsideration of our decision on preliminary
motions (Paper 65) is GRANTED to the extent that we have considered the arguments raised by
Deen;
FURTHER ORDERED that we do not modify our decision on preliminary
motions (Paper 62);
FURTHER ORDERED that judgment as to Count 1, the sole count in the
interference, is awarded against junior party KEITH CHARLES DEEN, MARK R. HURLE,
PETER YOUNG, and KONG B. TAN;
3 See 37 CFR § 1.654.
6
FURTHER ORDERED that junior party, KEITH CHARLES DEEN, MARK R.
HURLE, PETER YOUNG, and KONG B. TAN, is not entitled to a patent containing claims 1-3
and 5-18 of patent 6,013,476, which correspond to Count 1;
FURTHER ORDERED that if there is a settlement agreement, the parties'
attention is directed to 35 USC § 135(c); and
FURTHER ORDERED that a copy of this decision be given a paper number and
be entered in the administrative records of Deen's 6,013,476 patent and Ni's 09/095,094
application.
CAROL A. SPIZGEI!
Administrative Patent Judge
BOARD OF PATENT
SA11Y (AZDNER LANE APPEALS
Administrative Patent Judge AND
INTERFERENCES
MICHAEL P. TIERNEY
Administrative Patent Judge
7
cc (via facsimile and first class mail):
Attorney for Deen (real party in interest: SmithKline Beecham Corporation):
Paul F. Prestia
RATNER & PRESTIA
Suite 301, One Westlakes (Berwyn)
P. 0. Box 980
Valley Forge, PA 19482-0980
Tel: 610-407-0700
Fax: 610-407-0701
Attorney for Ni (real party in interest: Human Genome Sciences, Inc.):
R. Danny Huntington, Esq.
BURNS, DOANE, SWECKER & MATHIS, L.L.P.
1737 King Street, 4' Floor
Alexandria, VA 22314
Tel: 703-836-6620
Fax: 703-836-2021
8