Biogen Ma, Inc v. Japanese Foundation for , 785 F.3d 648 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
BIOGEN MA, INC.,
Plaintiff-Appellant
v.
JAPANESE FOUNDATION FOR CANCER
RESEARCH, BAYER PHARMA AG,
Defendants-Appellees
______________________
2014-1525
______________________
Appeal from the United States District Court for the
District of Massachusetts in No. 1:13-cv-13061-FDS,
Judge F. Dennis Saylor IV.
______________________
Decided: May 7, 2015
______________________
EDWARD ANTHONY FIGG, Rothwell, Figg, Ernst &
Manbeck, P.C., Washington, DC, argued for plaintiff-
appellant. Also represented by DANIEL MCCALLUM,
ROBERT DANNY HUNTINGTON, SETH EDWARD COCKRUM;
CLAIRE LAPORTE, DONALD ROSS WARE, Foley Hoag LLP,
Boston, MA.
S. CALVIN WALDEN, Wilmer Cutler Pickering Hale and
Dorr LLP, New York, NY, argued for defendant-appellee
2 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
Japanese Foundation for Cancer Research. Also repre-
sented by BRITTANY BLUEITT AMADI, Washington, DC;
NELS LIPPERT, Tarter Krinsky & Drogin LLP, New York,
NY; PAULA JOANNE ESTRADA DE MARTIN, Baker, Donelson,
Bearman, Caldwell & Berkowitz, PC, New Orleans, LA.
DAVID I. BERL, Williams & Connolly LLP, Washing-
ton, DC, argued for defendant-appellee Bayer Pharma
AG. Also represented by THOMAS S. FLETCHER, DAVID M.
KRINSKY, BRUCE GENDERSON.
______________________
Before DYK, SCHALL, and CHEN, Circuit Judges.
DYK, Circuit Judge.
Biogen MA, Inc. (“Biogen”) brought suit in district
court, pursuant to 35 U.S.C. § 146, to challenge an inter-
ference decision by the Patent Trial and Appeal Board
(“PTAB” or the “Board”). The Board concluded that patent
applicant Walter Fiers was estopped from establishing
priority in Interference No. 105,939 (the “’939 interfer-
ence” or the “third interference”) because he had lost two
prior interferences covering the same subject matter. The
district court held that it lacked subject matter jurisdic-
tion because the Leahy-Smith America Invents Act, Pub.
L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), eliminated
district court jurisdiction under 35 U.S.C. § 146 with
respect to interferences commenced after September 15,
2012. The district court transferred this case to this court
pursuant to 28 U.S.C. § 1631.
We conclude that we have jurisdiction to consider the
district court’s jurisdiction; that the district court correct-
ly decided that it lacked jurisdiction under 35 U.S.C.
§ 146; and that the Board’s priority decision was not
erroneous. We affirm the Board’s decision.
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 3
BACKGROUND
Beginning in 1983, a series of interferences were
declared between Fiers and Haruo Sugano, Masami
Muramatsu, and Tadatsugu Taniguchi (collectively,
“Sugano”) generally relating to claims to DNA sequences
that encode the precursor and/or mature forms of human
fibroblast interferon (“hFIF”) proteins, which promote
viral resistance in human tissue, see Fiers v. Revel, 984
F.2d 1164, 1165 (Fed. Cir. 1993), and in the case of the
most recent interference, to claims for the proteins them-
selves. All of Fiers’ applications claimed priority to United
Kingdom Patent Application No. GB 8011306, filed on
April 3, 1980, while Sugano’s applications and patents
claimed priority to Japanese Patent Application No.
33931/80, filed on March 19, 1980 (the “Japanese Applica-
tion”).
The first, Interference No. 101,096 (the “’096 interfer-
ence” or the “first interference”), declared August 30,
1983, was between Sugano’s U.S. Patent Application No.
06/201,359 and Fiers’ U.S. Patent Application No.
06/250,609. The count was directed to the DNA sequences
coding for hFIF proteins. Fiers moved to add counts
directed to hFIF proteins, but this motion was denied. On
June 5, 1991, the Board of Patent Appeals and Interfer-
ences (“BPAI” or the “Board”) awarded priority to Sugano.
We affirmed. See Fiers, 984 F.2d at 1172.
The second, Interference No. 105,661 (the “’661 inter-
ference” or the “second interference”), declared March 4,
2009, was between Sugano’s U.S. Patent Nos. 5,236,859
and 5,514,567 and Fiers’ Application No. 08/471,646. The
count was directed to the DNA sequence encoding the
mature hFIF proteins, and the Board ordered Fiers to
show cause why the interference should continue given
that its subject matter was the same as in the first inter-
ference. On August 4, 2009, the Board found that Fiers
4 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
failed to discharge his burden, entering judgment in favor
of Sugano. Fiers did not appeal that decision.
Finally, on July 16, 2013, the Board declared the ’939
interference between Fiers’ U.S. Patent Application No.
08/253,843 (the “Fiers ’843 application”), filed on June 3,
1994, and Sugano’s U.S. Patent Application No.
08/463,757 (the “Sugano ’757 application”), filed on June
5, 1995. The counts were directed to precursor and ma-
ture hFIF proteins. Biogen owns the Fiers ’843 applica-
tion. The Japanese Foundation for Cancer Research
(“JFC”) owns the Sugano ’757 application. 1 The specifica-
tions of the patent applications in the ’939 interference
are largely the same as the specifications of the applica-
tions or patents in the prior two interferences.
On July 16, 2013, the Board again ordered Fiers to
show cause as to why Fiers should not be estopped from
proceeding, given that Fiers lost the prior interferences
and the subject matter was again the same as in the prior
interferences.
In its response to the order, Fiers argued against
applying to the interference two forms of interference
estoppel: estoppel by judgment and estoppel for failure to
file a motion. Fiers argued that estoppel by judgment did
not apply because his claims to hFIF proteins are patent-
ably distinct from the DNA sequences encoding those
proteins (the subject matter of the earlier interferences).
Fiers submitted several pieces of purported evidence to
support his argument. Fiers also argued that estoppel for
failure to file a motion did not apply because Fiers had
moved in prior interferences to add counts reciting hFIF
1 Bayer Pharma AG is a party to this case because
it is a successor to an exclusive license agreement with
the JFC.
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 5
proteins, and had been barred from doing so by the Board.
Sugano responded that Fiers was properly estopped
from pursuing the hFIF protein claims because he had
failed to submit sufficient evidence to show that the
protein claims were patentably distinct from the lost
counts, and that Fiers’ failure in its prior motions to
follow the Board’s procedural rules, as well as its failure
to petition for review, also resulted in estoppel.
The Board agreed with Sugano and held that estoppel
applied. The Board concluded that Fiers failed to dis-
charge his burden to show patentable distinctness and
that Fiers was estopped from continuing the interference
by reason of the two earlier interference proceedings. The
Board entered judgment in favor of Sugano on October 3,
2013.
On December 2, 2013, Biogen filed a civil action in
district court under pre-AIA 35 U.S.C. § 146 to set aside
the Board’s determination. JFC moved to dismiss the case
for lack of subject matter jurisdiction. On May 22, 2014,
the district court granted the motion to dismiss, holding
that the AIA had eliminated § 146 jurisdiction to review
interferences, such as the one here, that were filed after
September 15, 2012. The district court transferred the
case to this court pursuant to 28 U.S.C. § 1631 so that we
could review the Board’s decision under pre-AIA 35 U.S.C.
§ 141.
DISCUSSION
I
A threshold issue is whether we have jurisdiction to
determine the correctness of the district court’s determi-
nation that it lacked subject matter jurisdiction under
pre-AIA 35 U.S.C. § 146. JFC contends that the district
court’s determination that it lacked jurisdiction under
§ 146 is not reviewable.
6 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
In In re Teles AG Informationstechnologien, 747 F.3d
1357 (Fed. Cir. 2014), we concluded that we had jurisdic-
tion in a case virtually indistinguishable in principle from
this case. In Teles, the district court dismissed a patent-
ee’s action brought under 35 U.S.C. § 145 to review a
Board ex parte reexamination decision for lack of subject
matter jurisdiction. The district court then transferred
the case to this court pursuant to § 1631. We held that the
dismissal was improper and that the district court should
have only transferred the case. Teles, 747 F.3d at 1359–
61. Treating the case as though it had been properly
transferred, we then proceeded to address the question of
the district court’s jurisdiction under 35 U.S.C. § 145 and
the question of statutory interpretation underlying that
issue under a de novo standard. See id. at 1361. We held
that amendments to the patent statute had eliminated
district court review of actions under 35 U.S.C. § 145 for
patent owners (as opposed to applicants) and “affirm[ed]
that the district court lacked jurisdiction over the § 145
action.” Id. at 1366.
Since we did not explicitly discuss the basis for adju-
dicating the district court’s jurisdiction in Teles, we find it
appropriate to do so here. It is well-established that
transfer orders are generally not appealable. See Subsalve
USA Corp. v. Watson Mfg., Inc., 462 F.3d 41, 47 (1st Cir.
2006) (“[E]very court of appeals to have confronted [the
issue] has concluded that section 1631 transfer orders are
not immediately appealable.”). 2 We have not been asked,
however, to sit in appellate review of the district court’s
transfer order. We are instead the transferee court, and
Biogen, despite its having styled its request as a “re-
mand,” is effectively asking us to retransfer this case to
2 There is a limited exception for transfers to the
Court of Federal Claims. See 28 U.S.C. § 1292(d)(4).
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 7
the district court because the district court had jurisdic-
tion under pre-AIA § 146 and we do not have jurisdiction
under pre-AIA § 141. See 28 U.S.C. § 1631.
It is undisputed that we have “inherent jurisdiction to
determine [our] own jurisdiction.” C.R. Bard, Inc. v.
Schwartz, 716 F.2d 874, 877 (Fed. Cir. 1983) (citing
United States v. United Mine Workers of Am., 330 U.S.
258 (1947)). In this context, Congress has provided two
mutually exclusive avenues of review under § 146 and
§ 141, so the question of our jurisdiction and the district
court’s jurisdiction are different sides of the same coin. If
the district court lacked jurisdiction under § 146, we have
jurisdiction under § 141 (as a result of the transfer), and if
the district court court had jurisdiction under § 146, we
lack jurisdiction under § 141. This latter proposition
requires some explanation.
Courts have repeatedly held in the context of § 141 3
3 Section 141 provided in relevant part:
A party to an interference dissatisfied with
the decision of the Board of Patent Appeals and
Interferences on the interference may appeal the
decision to the United States Court of Appeals for
the Federal Circuit, but such appeal shall be dis-
missed if any adverse party to such interference,
within twenty days after the appellant has filed
notice of appeal in accordance with section 142 of
this title, files notice with the Director that the
party elects to have all further proceedings con-
ducted as provided in section 146 of this title. If
the appellant does not, within thirty days after fil-
ing of such notice by the adverse party, file a civil
action under section 146, the decision appealed
8 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
and § 146, 4 and their predecessor statutes, that Congress
provided “alternative paths for judicial review of an
interference decision of the Board.” AbbVie Deutschland
GmbH v. Janssen Biotech, Inc., 759 F.3d 1285, 1296 (Fed.
Cir. 2014). As the Supreme Court explained in Hoover Co.
v. Coe, 325 U.S. 79 (1945), “[i]t is evident that alternative
rights of review are accorded an applicant—one by appeal
to the United States Court of Customs and Patent Ap-
peals, the other by bill in equity filed in one of the federal
district courts.” 325 U.S. at 83. The Court thoroughly
reviewed the legislative history of the patent acts since
1836, which revealed continued maintenance of alterna-
tive paths of review. See id. at 84–87. The Court held that
in 1927, “Congress decided . . . to allow an applicant ‘to
have the decision of the Patent Office reviewed either by
the court of appeals or by filing a bill in equity, but not
both.’” Id. at 87 (emphasis added) (quoting S. Rep. No.
1313, at 4 (1927)); see also P.J. Federico, Commentary on
from shall govern the further proceedings in the
case.
35 U.S.C. § 141 (2006). Unless otherwise specified, we
refer to the pre-AIA versions of both § 141 and § 146.
4 Section 146 provided in relevant part:
Any party to an interference dissatisfied with
the decision of the Board of Patent Appeals and
Interferences on the interference, may have reme-
dy by civil action, if commenced within such time
after such decision, not less than sixty days, as
the Director appoints or as provided in section 141
of this title, unless he has appealed to the United
States Court of Appeals for the Federal Circuit,
and such appeal is pending or has been decided.
35 U.S.C. § 146 (2006).
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 9
the New Patent Act, reprinted in 75 J. Pat. & Trademark
Off. Soc’y 161, 199 (1993) (explaining that “[d]ecisions of
the Patent Office in refusing to grant patents, and in
interferences, are reviewable by the courts in either of two
ways” and that “since 1927 they have been mutually
exclusive”).
Our predecessor court and other circuits have been
uniform in treating § 141 and § 146 or their predecessors
as mutually exclusive alternative paths of review that
parties irrevocably elect. In general, if a party elects one
path of review (§ 141 or § 146), the other is waived. 5 See
Hofstein v. Silver, 201 U.S.P.Q. 77, 79 (CCPA 1979)
(explaining that the “clear import of the statute is to allow
a dissatisfied party the option of either seeking review in
this court or filing a civil action, but not both” and that
choosing one path would be an “irrevocable election”); In
re Isler, 152 F.2d 1002, 1004 (CCPA 1946) (noting that the
predecessor statutes to §§ 141 and 146 are “alternative
5 The statute was explicit about the waiver in sev-
eral respects. Section 146 stated that a party has a reme-
dy in district court “unless” he has appealed in the
Federal Circuit, 35 U.S.C. § 146 (2006), and § 141 stated
that an applicant may appeal a BPAI decision under
§ 134, but “[b]y filing such an appeal the applicant waives
his or her right to proceed under section 145 of this title,”
35 U.S.C. § 141 (2006).
However, § 141 provided for one limited exception to
the rule that the patentee’s informed election governs: an
“appeal shall be dismissed if any adverse party to such
interference, within twenty days after the appellant has
filed notice of appeal . . . , files notice with the Director
that the party elects to have all further proceedings
conducted as provided in section 146 of this title.” 35
U.S.C. § 141 (2006).
10 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
and mutually exclusive” (quoting Hemphill Co. v. Coe, 121
F.2d 897, 898 (D.C. Cir. 1941))); Cleveland Trust Co. v.
Berry, 99 F.2d 517, 521 (6th Cir. 1938) (noting that an
appellant “could not be deprived of its right to file a bill in
equity except by its own election to appeal to the [appel-
late court]”); Jensen v. Lorenz, 92 F.2d 992, 994–95 (D.C.
Cir. 1937) (“It is evident that Congress intended to re-
quire an election by the party as between the two reme-
dies offered to him . . . and that when such election is
made by the litigant it is to be final.”); Bakelite Corp. v.
Nat’l Aniline & Chem. Co., 83 F.2d 176, 177 (2d Cir. 1936)
(noting it “cannot be doubted” the statutes provide alter-
native remedies); Walther v. Vanderveer, 64 F.2d 540, 541
(CCPA 1933) (holding that because parties “elected” to
bring the case to the appellate court in the first instance,
the appeal could not then be dismissed just to confer
jurisdiction upon the district court to determine the
issues).
Thus, an election of § 146 review would foreclose § 141
review in this court and deprive us of jurisdiction. 6 But of
course, this is true only if § 146 review were available,
since, in general, “an election will be found only if a party
has chosen to pursue one position that is inconsistent
with another possible position . . . .” 18B Charles A.
Wright, Arthur R. Miller & Edward H. Cooper, Federal
Practice & Procedure § 4476 (2d ed. 2002).
In short, we have jurisdiction under § 141 as a result
6 Section 145, the section we interpreted in Teles, is
similar. See Hyatt v. Kappos, 625 F.3d 1320, 1321 n.2
(Fed. Cir. 2010) (en banc) (noting that sections 145 and
146 are “parallel provisions”). The predecessor statute to
§ 146, Revised Statute 4915, is the same one as the prede-
cessor to § 145. See Kappos v. Hyatt, 132 S. Ct. 1690,
1698–99 (2012).
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 11
of the transfer if § 146 review was unavailable, but we
lack jurisdiction if this case was properly brought to the
district court under § 146. We thus must determine if the
district court indeed lacked jurisdiction under § 146 in
order to determine whether we lack jurisdiction and
should retransfer the case.
Contrary to what JFC argues, the Supreme Court’s
decision in Christianson v. Colt Industries Operating
Corp., 486 U.S. 800 (1988), is not to the contrary. In
Christianson, the Court held that, in order to avoid a
“perpetual game of jurisdictional ping pong” of transfers
and retransfers, a court of appeals should defer to another
court of appeal’s transfer order under § 1631 unless the
transferee court considers the transfer “clearly errone-
ous.” Id. at 818–19. “[I]f the transferee court can find the
transfer decision plausible, its jurisdictional inquiry is at
an end.” Id. at 819. Christianson thus recognized that the
transferee court has the authority to determine its own
jurisdiction, and only stands for the proposition that
courts ought to “apply law-of-the-case principles to trans-
fer decisions of coordinate courts.” Id. at 816 (emphasis
added). Christianson does not suggest that a court of
appeals should defer to a non-coordinate district court on
a jurisdictional issue. Such deference would be particular-
ly odd here since we would have appellate jurisdiction if
the district court had determined that it did have jurisdic-
tion. See Trayco, Inc. v. United States, 994 F.2d 832, 835
(Fed. Cir. 1993). If we can determine that a district court
erred in accepting jurisdiction, it follows that we can
equally review the district court’s determination that it
lacked jurisdiction.
II
We turn now to the question of whether pre-AIA § 146
conferred jurisdiction on the district court in this case.
That depends on whether the AIA, enacted on September
12 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
16, 2011, eliminated the district court’s § 146 jurisdiction
to review decisions from interference proceedings declared
after September 15, 2012. Ultimately, we conclude that
specific statutory provisions in the AIA as amended 7
govern the availability of § 146 review for interferences
declared after September 15, 2012, and that for interfer-
ences declared after that date, § 146 review is not availa-
ble.
The AIA changed the patent system, among other
things, from a first-to-invent to a first-inventor-to-file
regime for determining patent priority. See AIA § 3;
Madstad Eng’g, Inc. v. U.S. Patent & Trademark Office,
756 F.3d 1366, 1368 (Fed. Cir. 2014). In doing so, it
amended the patent statute’s central provisions on pa-
tentability, including 35 U.S.C. §§ 102–103, AIA § 3(a)–
(c); established derivation proceedings and eliminated
interference proceedings, AIA § 3(i)–(j); and changed the
BPAI to the PTAB, AIA §§ 3(j), 7(a). This case concerns
the effective date of these provisions as to interferences.
In interpreting a statute, we start with the statute’s
language. Hughes Aircraft Co. v. Jacobson, 525 U.S. 432,
438 (1999). Unfortunately, the effective date provisions in
the AIA are far from a model of clarity. In general, the
statute contains a hodgepodge of express reservations of
pre-AIA provisions, see AIA § 6(c)(2)(C) (pre-AIA provi-
sions regarding inter partes reexamination “shall contin-
ue to apply to requests for [certain] inter partes
reexamination[s]”); implicit reservations, see AIA
§ 18(a)(1)(C) (mentioning a petitioner who challenges a
patent in a covered business method proceeding on a
ground raised under pre-AIA §§ 102, 103); TCA § 1(k)(3)
7 The AIA was amended by the Leahy-Smith Amer-
ica Invents Technical Corrections Act, Pub. L. No. 112–
274, 126 Stat. 2456 (2013) (“TCA”).
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 13
(mentioning interferences declared under pre-AIA § 135);
and sometimes simply silence, see AIA § 3 (amending but
saying nothing about preserving pre-AIA §§ 102, 103).
Here, Biogen argues that AIA § 3(n)(1) makes the new
AIA provisions applicable only to new applications and
implicitly preserves interference proceedings and judicial
review provisions concerning interference proceedings for
patent applications filed before March 16, 2013, including
§ 146 review for Board decisions in interferences. JFC, on
the other hand, apparently argues that § 3(n)(1) provides
that the new AIA provisions shall apply not only to new
applications but also to old applications pending on March
16, 2013. We think JFC’s interpretation in this respect is
untenable since it is clear from the structure of the stat-
ute that new provisions cannot be applied in their entire-
ty to old applications. See Tobinick v. Olmarker, 753 F.3d
1220, 1223 n.1 (Fed. Cir. 2014) (explaining that pre-AIA
law applies generally to old interferences). Indeed, JFC
agrees that pre-AIA law generally applies to interferences
before the PTO. While we thus construe § 3(n)(1) as
applying the new AIA provisions only to new applications,
it does not follow that § 3(n)(1) requires application of pre-
AIA judicial review provisions to old applications.
Section § 3(n)(1) provides:
(1) IN GENERAL.—Except as otherwise provided in
this section, the amendments made by this section
shall take effect upon the expiration of the 18-
month period beginning on the date of the enact-
ment of this Act [i.e., March 16, 2013], and shall
apply to any application for patent, and to any pa-
tent issuing thereon, that contains or contained at
any time—
(A) a claim to a claimed invention that has
an effective filing date as defined in section 100(i)
of title 35, United States Code, that is on or after
14 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
the effective date described in this paragraph; or
(B) a specific reference under section 120,
121, or 365(c) of title 35, United States Code, to
any patent or application that contains or con-
tained at any time such a claim.
This provision on its face is silent as to whether interfer-
ence proceedings and judicial review of these proceedings
continues with respect to patent applications filed prior to
March 16, 2013. That silence, says Biogen, means that the
old interference provisions, including § 146 review, con-
tinue to apply to previously-filed patent applications.
It is certainly true, as we have noted above and as the
parties agree, that under AIA § 3(n)(1) interference pro-
ceedings are to continue with respect to previously-filed
patent applications, that is, applications filed before
March 16, 2013. 8 But we think Congress specifically
addressed the manner of judicial review of Board deci-
8 One exception is § 6(f)(3)(A), which provides that
the Director may dismiss a pending interference in favor
of a post-grant review. See AIA § 6(f)(3)(A).
Continuance of interference proceedings is also ap-
parent from § 3(n)(2), which provides that pre-AIA inter-
ference provisions § 102(g), § 135, and § 291 continue to
apply to patent applications with claims with “mixed”
filing dates, i.e., applications with claims with filing dates
before March 16, 2013, and claims with filing dates after
March 15, 2013. See AIA § 3(n)(2). Section 3(n)(2) does
not, however, provide for judicial review of such interfer-
ences. Nor, as Biogen points out, was the district court
correct in concluding that § 3(n)(2), which in fact only
deals with patent applications with mixed filing dates,
“provides the basis for the PTAB to continue to declare
interferences.” Appellant’s Br. at 22 n.9.
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 15
sions in continuing interference proceedings and that the
specific provisions with respect to judicial review trump
any general rule of survivorship that could be inferred
from § 3(n)(1).
In the AIA, Congress included § 6(f)(3)(C), which
provides:
(C) APPEALS.—The authorization to appeal or
have remedy from derivation proceedings in sec-
tions 141(d) and 146 of title 35, United States
Code, as amended by this Act, and the jurisdiction
to entertain appeals from derivation proceedings
in section 1295(a)(4)(A) of title 28, United States
Code, as amended by this Act, shall be deemed to
extend to any final decision in an interference
that is commenced before the effective date set
forth in paragraph (2)(A) of this subsection [i.e.,
September 16, 2012] and that is not dismissed
pursuant to this paragraph.
This section provides that amended § 146 (which now
authorizes review only of derivation proceedings) shall be
“deemed” to provide review of interferences declared
before September 16, 2012. 9 The section does not, howev-
er, explicitly provide for judicial review for interferences
declared after September 15, 2012.
Congress corrected this omission in TCA § 1(k)(3). It
provides:
(3) REVIEW OF INTERFERENCE DECISIONS.—The
provisions of sections 6 and 141 of title 35, United
9 Section 6(f)(3)(B) also provides that the PTAB
shall be “deem[ed]” the BPAI for purposes of conducting
“any further proceedings in [such] interference[s].” AIA
§ 6(f)(3)(B).
16 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
States Code, and section 1295(a)(4)(A) of title 28,
United States Code, as in effect on September 15,
2012, shall apply to interference proceedings that
are declared after September 15, 2012, under sec-
tion 135 of title 35, United States Code, as in ef-
fect before the effective date under section 3(n) of
the Leahy-Smith America Invents Act. The Patent
Trial and Appeal Board may be deemed to be the
Board of Patent Appeals and Interferences for
purposes of such interference proceedings.
For interferences declared after September 15, 2012, this
provision explicitly authorizes pre-AIA § 141 review, but
unlike AIA § 6(f)(c)(3), does not authorize pre-AIA § 146
review. Therefore, AIA § 6(f)(3)(C) and TCA § 1(k)(3)
together make clear that pre-AIA § 146 review was elimi-
nated for interference proceedings declared after Septem-
ber 15, 2012.
The specific provisions in § 6(f)(3)(C) and § 1(k)(3)
require us to apply the basic tenet of statutory interpreta-
tion that the specific governs the general. As the Supreme
Court said in RadLAX Gateway Hotel, LLC v. Amalga-
mated Bank, 132 S. Ct. 2065 (2012), it is “a commonplace
of statutory construction that the specific governs the
general,” especially where Congress “has enacted a com-
prehensive scheme and has deliberately targeted specific
problems with specific solutions.” Id. at 2071 (internal
quotation marks and citations omitted). This principle
equally applies when it comes to interpreting effective
date provisions. For instance, in Gozlon-Peretz v. United
States, 498 U.S. 395 (1991), the Supreme Court interpret-
ed a specific provision in the Anti-Drug Abuse Act of 1986
governing supervised release. The petitioner had argued
that the effective date of that specific provision should be
delayed pursuant to a more general effective date provi-
sion in a different section of the statute. Id. at 406. Reject-
ing that argument, the Court noted that a “specific
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 17
provision controls over one of more general application.”
Id. at 407 (citing Crawford Fitting Co. v. J.T. Gibbons,
Inc., 482 U.S. 437, 445 (1987)).
Here, even if the general effective date provision in
§ 3(n)(1) suggests that in general Congress preserved pre-
AIA provisions for pre-March 16, 2013, patent applica-
tions, it does not follow that we should myopically apply
§ 3(n)(1) independently of the specific provisions in AIA
§ 6(f)(3)(C) and § 1(k)(3). Here, Congress “deliberately
targeted specific problems with specific solutions,”
RadLAX, 132 S. Ct. at 2071, so we cannot ignore them.
Nor does the legislative history of the AIA suggest other-
wise. While Senator Kyl recognized “the continuing need
to allow appeals of pending interferences,” 157 Cong. Rec.
1377 (2011) (emphasis added), the legislative history is
silent about the specific question of what pre-AIA review
was available for interference proceedings declared after
September 15, 2012. The regulations and commentary of
the Patent and Trademark Office (“PTO”) that Biogen
cites are equally unhelpful. They do not say that § 146
review is available for interferences commenced after
September 15, 2012. See 77 Fed. Reg. 48,612, 48,625 (Aug.
14, 2012) (“[C]ertain interferences may be deemed to be
eligible for judicial review as though they were derivation
proceedings.” (emphasis added)); 10 37 C.F.R. § 90.1
(“[W]here available, judicial review of decisions arising out
10 The commentary also states that AIA § 3 “makes
review of interference decisions by a District Court under
35 U.S.C. [§] 146 available only if the provisions of
§ 3(n)(1) . . . are not satisfied.” 77 Fed. Reg. 6,879, 6,891
(Feb. 9, 2012). It is difficult to parse this particular com-
ment, but it certainly does not clearly state § 146 review
remains available for interferences commenced after
September 15, 2012.
18 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
of interferences declared pursuant to 35 U.S.C. [§] 135
continue to be governed by the pertinent regulations . . . .”
(emphasis added)). In any case, the PTO’s regulations
interpreting the scope of the district court’s subject matter
jurisdiction would not be entitled to Chevron deference.
See Love v. Thomas, 858 F.2d 1347, 1352 n.9 (9th Cir.
1988) (Chevron “deference does not extend to the question
of judicial review, a matter within the particular expertise
of the courts”).
We must accordingly follow the express provisions in
the statute. Biogen’s other convoluted efforts to argue
that Congress’ specific approach should not govern re-
quire no further discussion.
In short, because the AIA and its technical corrections
provided that only pre-AIA § 141 review in this court
would be available for interferences declared after Sep-
tember 15, 2012, and the ’939 interference here was
declared July 16, 2013, the district court properly found
that it lacked subject matter jurisdiction. It follows that
we have jurisdiction to hear Biogen’s appeal pursuant to
§ 141.
III
We now turn to the merits of Biogen’s appeal of the
Board’s judgment against Fiers in the ’939 interference.
The Board’s judgment was based on Fiers’ failure to meet
his burden in responding to the July 16, 2013, order to
show cause why Fiers should not be estopped from con-
tinuing with the interference, given that he had lost two
prior interferences.
Interference estoppel “by judgment” applies where “a
losing party in a previous interference between the same
parties” tries to patent a claim “not patentably distinct
from the counts in issue in that [prior] interference.”
Woods v. Tsuchiya, 754 F.2d 1571, 1579 (Fed. Cir. 1985);
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 19
see also In re Deckler, 977 F.2d 1449, 1452 (Fed. Cir.
1992) (holding that a losing priority judgment in an
interference proceeding bars the loser from obtaining a
patent containing claims that are patentably indistin-
guishable from the claims corresponding to the lost
count); MPEP § 2308.03 (9th ed. March 2014) (interfer-
ence estoppel applies where a “losing party is barred on
the merits from seeking a claim that would have been
anticipated or rendered obvious by the subject matter of
the lost count”).
The parties do not dispute that estoppel by judgment,
if applicable, is itself sufficient to estop Fiers from contin-
uing the interference even if Fiers’ motion to add protein
counts to the earlier interferences failed. 11 Estoppel by
11 That unsuccessful efforts to add a count do not
prevent estoppel by judgment is clear from Stoudt v.
Guggenheim, 651 F.2d 760 (CCPA 1981), a case on which
Biogen relies. As the court in Stoudt explained: “Where
the prior judgment between the same parties is not strict-
ly res judicata because it resolves a different and distinct
issue [e.g., a patentably distinct count], that judgment
may nonetheless create an estoppel as to matters actually
in issue or points controverted.” Id. at 764 (bracketed
content in original). The court treated estoppel by judg-
ment and estoppel for failure to file a motion separately,
holding that neither applied in that case:
We agree with the board’s adoption of the ex-
aminer’s ex parte determination that the present
count is patentably distinct from [the count in] the
previous interference. No identity of issues is
therefore present in the two interferences and the
doctrine of res judicata is inapplicable.
20 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
judgment rests on the principle that a “judgment in an
action precludes relitigation of claims or issues that were
. . . raised in [the earlier] proceeding.” In re Deckler, 977
F.2d at 1452. This is “an application of settled principles
of res judicata,” id., under which “a final judgment on the
merits of an action precludes . . . relitigating issues.” San
Remo Hotel, L.P. v. City & Cnty. of S.F., Cal., 545 U.S.
323, 336 n.16 (2005). Claims that are not patentably
distinct from lost counts were already adjudicated in the
prior interference and are thus conclusive. Even if Fiers’
filing of the motion to add the protein count would suffice
to avoid other forms of estoppel, it is irrelevant to estoppel
by judgment. See Restatement (Second) of Judgments,
§ 26 cmt. b (1980) (noting that the “mere refusal of the
court . . . to allow an amendment . . . , even where the
refusal of the amendment was urged by the defendant, is
not a reservation by the court [of the right to maintain a
second action]”).
We agree with the Board that Fiers failed to meet his
burden to show patentable distinctness to avoid interfer-
ence estoppel by judgment.
This issue of patentable distinctness arose in the most
recent interference proceeding when the Board issued a
show cause order requiring Fiers to “show why it will be
able to prove an earlier date of conception in the current
Stoudt moved to add the proposed count. The
interference examiner’s denial of that motion was
not appealable to the board, and Stoudt could do
nothing further to bring the matter before the
board in the earlier interference. The estoppel
doctrine [based on failure to file a motion] there-
fore finds no application to the facts of this case.
Id. at 765.
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 21
interference when it could not do so in the prior interfer-
ence [the ’096 interference].” J.A. 2807. Noting that a
losing party to an interference is barred from obtaining a
patent on claims that are patentably indistinguishable
from the subject matter of the earlier count, the Board
stated that “[i]n light of [the fact] that DNA and the
known genetic code indicating which DNA sequences
encode each amino acid, those of skill in the art would
have considered the polypeptide Fiers now claims to have
been obvious.” J.A. 2808.
Biogen argues on appeal that the hFIF proteins are
patentably distinct because they are “functional,” com-
plaining that Fiers “should be entitled to introduce evi-
dence in the ’939 interference to demonstrate that in 1980
mere possession of the DNA sequence fell far short of
possession of the functional protein required by the
claims.” Appellant’s Br. at 43. But in fact, Biogen did have
that opportunity in its response to the show cause order.
It failed to properly submit evidence showing patentable
distinctness, and cannot now argue that the proteins are
patentably distinct from the DNA.
Biogen does not contend that the show cause order
was issued erroneously, and does not dispute that Fiers
had the burden to provide evidence to show patentable
distinctness. Instead, Biogen argues that there is no
estoppel by judgment here because Fiers showed in his
response to the show cause order that the hFIF proteins
claimed in the ’939 interference are not obvious over the
DNA sequences encoding those proteins that were at issue
in the prior interferences. In his response, Fiers pointed
to four pieces of alleged evidence.
First, Fiers pointed to the fact that, on April 15, 1982,
the PTO imposed a restriction requirement during prose-
cution of Fiers’ U.S. Application No. 06/250,609 (the “’609
application,” of which the ’843 application is a divisional),
22 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
filed April 3, 1981, between claims directed to the DNA
sequences and claims directed to the proteins. However, a
restriction requirement is not substantive evidence that
Fiers’ claims are patentably distinct over the DNA se-
quences. At most, it is evidence that the examiner
thought that there were “two or more independent and
distinct inventions” claimed in a single application. 35
U.S.C. § 121; 37 C.F.R. § 1.142; MPEP § 802.01 (9th ed.
March 2014). Restriction requirements are discretionary
decisions, primarily for administrative convenience, and
do not represent a final determination that the relevant
claims are patentably distinct. See Applied Materials, Inc.
v. Advanced Semiconductor Materials Am., Inc., 98 F.3d
1563, 1568 (Fed. Cir. 1996) (noting restriction require-
ment is for “administrative convenience”); Transco Prods.
Inc. v. Performance Contracting, Inc., 38 F.3d 551, 558–59
(Fed. Cir. 1994) (same); In re Watkinson, 900 F.2d 230,
233 (Fed. Cir. 1990) (restriction is “a matter within the
discretion of the examiner and not tantamount to a rejec-
tion of claims”); In re Hengehold, 440 F.2d 1395, 1403
(CCPA 1971) (restriction is a “discretionary, procedural or
nonsubstantive” matter). 12
12 Biogen argues that the equitable principles under-
lying the safe harbor provision in 35 U.S.C. § 121 should
apply here to protect Fiers from estoppel. See 35 U.S.C.
§ 121 (“A patent issuing on an application with respect to
which a requirement for restriction under this section has
been made, or on an application filed as a result of such a
requirement, shall not be used as a reference either in the
Patent and Trademark Office or in the courts against a
divisional application or against the original application
or any patent issued on either of them, if the divisional
application is filed before the issuance of the patent on
the other application.”). Section 121 provides a safe har-
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 23
Second, Fiers argued that separate interferences, In-
terferences No. 105,334 and No. 105,337, were declared
between Sugano and a different party, Goeddel. Those
interferences separately involved counts corresponding to
hFIF proteins and the DNA encoding them. See Goeddel
v. Sugano, 617 F.3d 1350, 1352 (Fed. Cir. 2010). But once
again, this fact is not substantive evidence of patentable
distinctness. The discretionary decision to declare sepa-
rate interferences in another proceeding is not necessarily
a determination, let alone a final one, of patentable dis-
tinctness.
Third, Fiers pointed to a Board decision in the initial
ex parte proceeding concerning Fiers’ ’843 application
reversing an examiner’s determination that protein
claims in the Fiers application were unpatentable as
anticipated over Sugano’s ’859 and ’567 patents. But in
that decision, the Board reversed because the examiner
had not established an evidentiary basis, and expressly
said that it was making “no ruling as to whether the
subject matter of the rejected claims is patentably distinct
from” the DNA count in the first interference. J.A. 5212.
Finally, in a section of his response dedicated to argu-
ing, not that the protein claims were patentably distinct,
but that Fiers can prevail on priority, Fiers cited a decla-
bor from double patenting rejections against a patentee
on claims that were a result of an earlier restriction
requirement because it would be inequitable to reject
divided claims on the ground of double patenting when
the division was required on the theory that the original
application contained claims for more than one invention.
See Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353,
1361 (Fed. Cir. 2008). Section 121 is on its face inapplica-
ble here, and in any case, the restriction requirement did
not result in Fiers’ losing in the prior interferences.
24 BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER
ration by Dr. David A. Jackson. However, in that declara-
tion, Dr. Jackson addressed only whether the Japanese
application contains a written description of an embodi-
ment within the scope of the counts in the ’939 interfer-
ence, and whether the Japanese application provides
sufficient information for one skilled in the art to practice
such an embodiment without undue experimentation. J.A.
5198. There was nothing in the declaration about how
Fiers’ hFIF protein claims were not obvious over the lost
counts directed to the DNA sequences.
We thus see no error in the Board’s conclusion that
Fiers submitted no relevant evidence on patentable
distinctness and was thus estopped from continuing with
the interference.
CONCLUSION
We conclude that as a result of the transfer we have
jurisdiction under pre-AIA 35 U.S.C. § 141 to hear Bio-
gen’s appeal. This is so because the AIA eliminated dis-
trict courts’ subject matter jurisdiction under pre-AIA 35
U.S.C. § 146 to review decisions in interference proceed-
ings declared after September 15, 2012. We therefore
decline to transfer this case back to the district court.
On the merits, we conclude that the Board did not err
in entering judgment against Fiers on the basis of inter-
ference estoppel because Fiers did not discharge its bur-
den in response to the Board’s show cause order to
provide evidence of the patentable distinctness of its hFIF
protein claims over the DNA sequences encoding for such
proteins.
Biogen’s request for retransfer is:
DENIED
The Board’s decision is:
AFFIRMED
BIOGEN IDEC MA, INC. v. JAPANESE FOUNDATION FOR CANCER 25
COSTS
Costs to appellees.