In Biogen Idec MA, Inc. v. Japanese Foundation for Cancer Research, the Federal Circuit held that the American Invents Act (AIA) eliminated district courts’ subject matter jurisdiction to review a PTAB decision in interference proceedings declared after September 15, 2012.1 Thus, the Federal Circuit is the sole forum for interference appeals declared after that date, while decisions in interferences declared before that date may still be challenged in district court.
This decision has significant implications as the Federal Circuit reviews interference decisions based only on the record before the PTAB, whereas the district court permits new evidence to be admitted without regard to whether the issue was raised before the Board.2
Biogen filed an appeal in district court to challenge the PTAB’s interference decision under pre-AIA 35 U.S.C. §146.3 The Board had held that Biogen had failed to meet its burden of showing patentable distinctness of its hFIF protein claims over the DNA sequences encoding for such proteins in order to avoid interference estoppel by judgment.4The district court held that it did not have subject matter jurisdiction to hear the case under the AIA, but rather than dismiss the case, transferred it to the Federal Circuit for review under pre-AIA 35 U.S.C. §141.5
The Federal Circuit analyzed the AIA’s statutory language regarding interferences appeals to determine the jurisdictional issue. First, the court made clear that pre-AIA §141 and §146 provided “mutually exclusive alternative paths of review that parties irrevocably elect.”6 Therefore, an election of §146 review in the district court, if available, would foreclose §141 review in the Federal Circuit and deprive the Federal Circuit of jurisdiction.7 However, if §146 review was unavailable, then the transfer would give the Federal Circuit jurisdiction under §141.8
To determine if §146 review was available, the Federal Circuit needed to decide if the AIA as amended9 had eliminated the district court’s §146 review of interferences after September 15, 2012.10 The court considered three relevant sections of the AIA — § 3(n)(1), § 6(f)(3)(C), and TCA § 1(k)(3). It was undisputed that, under AIA § 3(n)(1), interference proceedings for applications filed before March 16, 2013, were to continue.11 However, the Federal Circuit viewed the specific provisions of AIA§ 6(f)(3)(C) and TCA § 1(k)(3) with respect to judicial review as eclipsing any general rule of survivorship that could be inferred from § 3(n)(1).12 Thus, the court concluded that the AIA and its technical corrections provided only for pre-AIA § 141 review in the Federal Circuit for interferences declared after September 15, 2012.13 Since the interference in this case was declared on July 16, 2013, the Federal Circuit held that the district court properly found it lacked subject matter jurisdiction.14
This decision has significant implications for losing parties at the PTAB because they no longer will be able to submit new evidence on appeal, which is permitted at the district court.15 The Federal Circuit applies the standard of review for a decision from a federal administrative agency under the Administrative Procedure Act (APA). The APA § 706 provides that a “reviewing court shall decide all relevant questions of law,” but under § 706 (2) the reviewing court must set aside any agency action, findings, and conclusions found to be “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law” or “unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute.” Thus, the Federal Circuit reviews legal conclusions of the PTAB de novo16 and factual findings of the PTAB for substantial evidence.17
Conversely, the district court will employ de novo review to fact findings if new evidence is admitted18 and the deferential agency standard of review if it is on the same record.19 This leads to the practical implication that appeals to the district court provided another opportunity for the appellant to introduce new evidence. Now this opportunity will not exist for interferences declared after September 15, 2012, as the Federal Circuit has sole appellate review of these decisions.