Digest of Biogen MA, Inc. v. Japanese Foundation for Cancer Research, No. 2014-1525 (Fed. Cir. May 7, 2015) (precedential). On appeal from the District of Massachusetts.1 Before Dyk, Schall, and Chen.
Procedural Posture: In an interference proceeding, the PTAB awarded priority to the defendant, ruling that the claims at issue were not patentably distinct from claims in prior interferences between the parties, and the plaintiff therefore was estopped. Plaintiff brought suit in district court to challenge the decision of the PTAB. The district court held that it lacked jurisdiction over the case and transferred it to the CAFC. The CAFC determined it was the proper court to review the PTAB’s decision, and affirmed.
- Appellate jurisdiction: CAFC had jurisdiction to review district court’s transfer of the case under 28 U.S.C. § 1631. Ordinarily, transfer orders are not appealable. However, with respect to the district court, the CAFC was sitting not as an appellate court but rather as a transferee court, and the plaintiff’s request for “remand” was really a request for retransfer. In order to determine its own jurisdiction to review the PTAB decision—which the court had inherent authority to do—the CAFC had to also determine the district court’s jurisdiction to do the same, because the relevant statutes were intertwined. Additionally, if the district court had determined that it did have jurisdiction, then the CAFC could review that determination on appeal; therefore, it would be odd if the opposite decision were not reviewable after transfer.
- Subject-matter jurisdiction: The district court correctly determined that it did not have jurisdiction under pre-AIA 35 U.S.C. § 146 to review the PTAB’s interference decision. The AIA and corrections thereto specifically provided that review of decisions in interference proceedings commenced after September 15, 2012 may be had in the CAFC under pre-AIA § 141, but did not specifically provide review of such decisions in district court under pre-AIA § 146. Therefore, by implication, review under pre-AIA § 146 was unavailable, and the district court was correct to transfer the case to the CAFC.
- Interferences: The PTAB correctly determined that the plaintiff (appellant) was estopped from maintaining the interference because of prior interferences. In response to a show-cause order, the plaintiff failed to provide evidence that the claims being sought were patentably distinct from claims for which the defendant had been awarded priority in previous interferences. A restriction requirement in an earlier application; a decision to declare two separate interferences (rather than one) in a dispute between the defendant and a third party; and a Board decision in an ex parte application were not substantive evidence, and the declaration submitted by plaintiff was not directed to patentable distinctions.