In Biogen MA, Inc. v. Japanese Foundation for Cancer Research, Appeal No. 2014-1525, the Federal Circuit affirmed a Patent Trial and Appeal Board decision that estopped a patent applicant from establishing priority in an interference and held the district court lacked jurisdiction under pre-AIA 35 U.S.C. § 146 to review the PTAB’s decision.

Biogen sued in district court to appeal the PTAB’s decision in an interference against the JFC for claims directed to various forms of DNA protein.  JFC had prevailed against Biogen in two previous interferences for claims directed to an encoding DNA sequence.  The PTAB found Biogen was estopped by the judgments in the previous interferences and entered judgment in favor of JFC.  The district court determined it did not have jurisdiction to review the PTAB’s decision under 35 U.S.C. § 146 and transferred the case to the Federal Circuit for review under 35 U.S.C. § 141.  Biogen appealed both the district court’s transfer and the PTAB’s judgment.

The Federal Circuit affirmed both the district court transfer and the PTAB judgment.  The Federal Circuit determined only pre-AIA § 141 review by the Federal Circuit is available for interferences declared after September 15, 2012.  The interference at issue was declared on July 16, 2013.  Accordingly, the Federal Circuit declined to transfer the appeal back to the district court.

The Federal Circuit also held Biogen did not meet its burden of showing the claims were patentably distinct from the counts at issue in the earlier interference.  Estoppel by judgment applies where a losing party in a previous interference between the same parties tries to patent a claim that is patentably indistinct from the counts at issue in the earlier interference.  The Federal Circuit rejected Biogen’s evidence of a restriction requirement between the protein and DNA sequence claims because it was not substantive evidence that the claims are patentably distinct.  For the same reason, the Federal Circuit rejected evidence of two interferences between JFC and a third party involving separate counts for the proteins and the DNA sequences.  Biogen’s expert declaration also did not address the question of patentable distinctness.