Filing a Claim Within One Year of Issuance of an Interfering Patent Does Not Discharge Applicant’s Duty Under 35 U.S.C. § 135(b)(1) for All Claims
July 17, 2006
Last Month at the Federal Circuit - August 2006
Judges: Rader (author), Bryson, Linn
[Appealed from: PTO, Board]
In Regents of the University of California v. University of Iowa Research Foundation, No. 05-1374 (Fed. Cir. July 17, 2006), the Federal Circuit affirmed the Board’s decision that 35 U.S.C. § 135(b)(1) barred California’s sole claim interfering with U.S. Patent No. 6,207,646 (“the ’646 patent”).
The ’646 patent, which is entitled “Immunostimulatory Nucleic Acid Molecules,” issued to the University of Iowa Research Foundation and others (collectively “Iowa”) in March 2001. The ’646 patent claimed compositions and their uses to minimize allergic reactions, and claim 3 in particular, which became the count in the interference, was directed to a method of minimizing reactions. At the same time, The Regents of the University of California’s (“California”) Application No. 09/265,191 (“the ’191 application”) was also pending before the PTO. Seven months after the ’646 patent issued, California added three new claims to its ’191 application (claims 202-204) directed to immunostimulatory nucleic acid compositions and a method of use, and requested an interference with the ’646 patent. The PTO rejected the new claims, and California eventually canceled claims 202-204 and added new claim 205 over a year and a half after the issuance of the ’646 patent. The PTO then declared Interference No. 105,171 between claim 205 of the ’191 application and the ’646 patent.
During the interference, Iowa filed a preliminary motion arguing that California’s claim 205 was barred under § 135(b)(1), having been filed more than one year after the issuance of the ’646 patent. The Board found that claim 205 contained material differences from claims 202-204 and, therefore, could not benefit from the earlier filing date. Accordingly, the Board held that claim 205 was barred and granted judgment for Iowa.
On appeal, California conceded that claim 205 differed materially from claims 202-204 and, instead, challenged the Board’s construction of § 135(b)(1), arguing that the filing of claims 202-204 satisfied the requirements of § 135(b)(1) and that section does not bar subsequent claims. The Federal Circuit rejected California’s contentions based on its own precedent, the plain meaning of the statute, and policy underlying the statute.
The Federal Circuit explained that its precedent makes clear that to overcome a § 135(b)(1) bar, a party must show that a postcritical date claim does not differ from a precritical date claim in any “material limitation.” This relationship is dispositive of the § 135(b)(1) issue. Moreover, the Court stated that factual distinctions between the present case and its precedent, such as California’s precritical date request for interference, are not legally significant.
Turning to the language of the statute, the Federal Circuit concluded that California’s proposed construction was also contrary to the language of § 135(b)(1). According to the Court, the plain meaning of the statute requires the potentially interfering party to file claims to the interfering subject matter before one year from issuance of the patent, not to file other unrelated claims.
The statutory term “such a claim” was interpreted to “refer to the claim that the potentially interfering party seeks to add, which is directed to the same or substantially the same subject matter as that claimed in a patent, regardless of whether that party earlier filed a different claim having the required identity with a patented claim.” Slip op. at 8. The claim is required to come before the critical date.
Finally, the Federal Circuit discussed the policy underlying § 135(b)(1), noting that it is “a statute of repose, placing a time limit on a patentee’s exposure to an interference proceeding.” Id. Such a general explanation, though, does not mean that the applicant can discharge all of its obligations for future claims by filing a relevant claim within a year. The Court noted that § 135(b)(1) is not a simple “notice statute” to inform the patentee of a potential interference, even if filing of a claim does put the patentee on notice.
The Federal Circuit went on to recognize an exception to the need for a limited exception to the one-year statutory bar provided under § 135(b)(1), explaining that “while an interference based on a post-critical date claim is not desirable, where such an interference is merely belated, meaning the same interference should have been earlier declared by the PTO, the interference should not be barred by operation of section 135(b)(1).” Id. at 9. Thus, there is an exception for “belated interferences,” but not permission for requesting different interferences by filing postcritical date claims without a nexus to the precritical date claims.
Finally, the Federal Circuit rejected California’s argument that the Board’s construction of § 135(b)(1) is unfair to applicants who file claims in a timely manner, but are delayed because of PTO rejections, such as lack of written description. The Court found no inequity in this delay and, instead, viewed it as a way to prevent applicants from relying on filing dates to which they are not entitled.