SNIPR Technologies Limited v. Rockefeller University, Appeal No. 2022-1260 (Fed. Cir. July 14, 2023)
Our case of the week addresses a wrinkle in the law concerning disputes between parties that filed patent applications covering the same invention on either side of the effective date of the America Invents Act (the AIA).
Prior to Congress’ adoption of the AIA, an administrative proceeding called an “interference” was used when two patents claimed the same invention, to determine which of two patents/applications was entitled to priority—and, thus, the patent. The AIA abolished that proceeding for patents issued from applications filed after the AIA went into effect. That raised an interesting question, not encountered until this case: if a pending patent application, filed prior to the AIA’s effective date, had a claim identical to a post-AIA patent, what happens? The pre-AIA patent application would be, by statute, subject to an interference proceeding. However, the post-AIA patent would not. The Patent Office, relying on language that an interference could be initiated against “any unexpired patent,” held that post-AIA patents could be drawn into interference proceeding. Read on to find out what the Federal Circuit decided.
As noted, interference proceedings were a feature of the pre-AIA Patent Act. They were used to address an aspect of pre-AIA patent law—that patent priority was given to the first inventor. An interference would be triggered when a pending patent application had the same claim as “any pending application, or . . . any unexpired patent.” This led to a costly and complicated process to determine which of the two was entitled to priority based on proving the first inventor.
The AIA changed the U.S. patent regime from a first-inventor system to a first-inventor-to-file system. As a consequence, for new patent applications, there is little if any relevance in the patenting process to the date of invention. Accordingly, with its adoption of a first-inventor-to-file system, Congress also did away with interference proceedings for all patents filed after the AIA’s effective date.
SNIPR applied for—and was awarded—five patents relating to clustered regularly interspaced short palindromic repeats (CRISPR) gene editing. Each of the patents claimed priority to a post-AIA patent application, and thus were subject to the post-AIA regime.
Rockefeller University already had CRISPR-related patent applications pending as of the effective date of the AIA. Although the opinion is vague about what transpired, it appears that Rockefeller University amended a pending application to cover the same subject matter as the SNIPR patents.
The Patent Office declared an interference to determine which party was the first to invent the claimed subject matter. SNIPR moved to terminate the proceeding as contrary to the AIA, because “interference[s are] unavailable to asses patents that are governed by the AIA.” The Board denied SNIPR’s motion, reasoning that Rockefeller’s claims were subject to the interference requirements of the pre-AIA Patent Act, and must be subjected to an interference. SNIPR never established an earlier priority date, so judgment was entered against it, and all of its claims were canceled.
The Court’s Opinion
The Federal Circuit disagreed with Rockefeller’s analysis. The issue wasn’t whether Rockefeller’s patent application was subject to an interference; it was whether SNIPR’s post-AIA patents could be forced into an interference. The Federal Circuit held that they could not. As the Federal Circuit phrased the dispute, it was “whether the Board has the authority to cancel SNIPR’s pure AIA claims through an interference for lack of invention priority under pre-AIA § 102(g).”
The Court relied heavily on the language of the statute and the legislative history underlying the statute. Specifically, the statute clearly stated that the AIA “shall apply” to all patents filed after its effective date. There was substantial legislative history discussing the eradication of the interference proceeding because of its cost and the burdens on the parties to maintain inventorship records. And Congress created a limited exception, allowing interferences for patents that have some claims with effective filing dates prior to the AIA and other patent claims with effective filing claims after the AIA (so-called “mixed patents or applications”). Given this statutory scheme, the Federal Circuit held that post-AIA patents were not subject to the AIA.
The Patent Office and Rockefeller argued that the interference statute specifically authorizes an interference to be initiated against “any unexpired patent.” The Federal Circuit rejected the notion that this could affect the rights of a post-AIA applicant, or was sufficient to alter the intended statutory scheme created by Congress for post-AIA patent filings. The Patent Office also provided a hypothetical scenario where two patents could get issued for the same invention, based on the transition between pre-AIA and post-AIA filings. The Federal Circuit said “this scenario is a remote one, contingent on many facts coming together and the filing dates for the AIA patent and pre-AIA application necessarily occurring close in timer around March 16, 2013 and less than a year apart.” The Court found the “unlikelihood of this obscure situation” persuasive enough to believe that Congress intended interferences to continue for 20 more years, until all pre-AIA applications will have expired.
What of the Underlying Dispute?
That led to another important question, though. If the Rockefeller patent applications really cover the same invention, and were filed several years earlier, what of the SNIPR patents? The Federal Circuit noted that there are several procedures available to address patents that should not have issued, including inter partes reviews and post-grant reviews. However, it was not even clear that the SNIPR patents are invalid. Because judgment in the interference proceeding was granted to Rockefeller without any analysis, it was not yet clear that the Rockefeller patents had an adequate written description or satisfied the enablement requirement—issues that often arise when parties seek to provoke an interference by drafting claims that are the same as or substantially similar to pending claims. Nor had it been determined that the Rockefeller patent application actually anticipated the SNIPR patents, or rendered them obvious. The Court acknowledged that these disputes remain live between the parties.
The opinion can be found here.
By Nika Aldrich
ALSO THIS WEEK
Trinity Info Media, LLC v. Covalent, Inc., Appeal No. 2022-1308 (Fed. Cir. July 14, 2023)
In an appeal from the U.S. District Court for the Central District of California, the Federal Circuit addressed whether the district court erred in granting Covalent’s motion to dismiss Trinity’s infringement claims relating to a poll-based networking system because the asserted patents did not claim patentable subject matter. The Federal Circuit affirmed the district court’s ruling. First, the Federal Circuit found that the asserted claims were directed to the abstract idea of matching based on questioning. Second, the Court found the asserted claims lacked an inventive concept sufficient to transform the abstract idea into a patent-eligible application.
The opinion can be found here.
By Mario E. Delegato
In re: Float‘N’Grill LLC, Appeal No. 2022-1438 (Fed. Cir. July 12, 2023)
In an appeal from the Board’s decision affirming the Examiner’s rejections of reissue claims under 35 USC § 251 (the original patent requirement, for reissue applications), the Court reviewed whether the Board erred in affirming the Examiner. The Court affirmed the Board on invalidity under the original patent requirement because the independent claims of the reissue application omitted a critical limitation—a plurality of magnets. Regarding Applicant’s arguments that the specification did not include any express statement of criticality of an element, the Court pointed out that this is not a prerequisite for a determination that the element is essential to the invention claimed in the original patent. Regarding Applicant’s arguments that the original specification supports a broad alternative limitation (“removably secured”), the Court pointed out that the original patent requirement is an independent basis for unpatentability of reissue claims. For these reasons, the Court affirmed the Board’s decision to uphold the rejection of the claims under the original patent requirement.
The opinion can be found here.
By Michael A. Cofield
Axonics, Inc. v. Medtronic, Inc., Appeal Nos. 2022-1451, -1452 (Fed. Cir. July 10, 2023)
In this case, the Federal Circuit vacated and remanded inter partes review findings by the Patent Trial and Appeal Board, which had upheld Medtronic’s patent claims concerning an implantable neurostimulation lead. The challenged patents described the invention largely in terms of electrical stimulation of sacral nerves, although the claims were not limited to sacral neurostimulation and the specification also discussed electrostimulation devices for other parts of the body. The Board’s non-obviousness findings had turned on the fact that one of Axonics’ asserted references was directed to stimulation of the trigeminal nerve root to treat chronic facial pain. Based on expert testimony that anatomical constraints would prevent use of the proposed combination in the trigeminal nerve region, as opposed to sacral nerves, the Board had found that a skilled artisan would not have been motivated to combine the references.
In vacating the Board’s decision, the Federal Circuit held that the Board “committed a fundamental legal error” in confining the motivation-to-combine inquiry to the trigeminal nerve context. The Court emphasized that the appropriate inquiry is whether an artisan would have been motivated to combine the teachings of the prior art to achieve the claimed invention, not to meet the requirements of the prior art references themselves. The Court explained that to hold otherwise would risk confining the prior art analysis to narrower grounds than were implicated by the patent monopoly for the invention. Because the challenged claims were not limited to any particular nerve application, the Court found that the Board erred both in its rationale for why an artisan would not have been motivated to combine the references, and also in its determination that relevant prior art was limited to leads for sacral neuromodulation. Because these errors were not harmless, the Court vacated the IPR decisions and remanded for further proceedings.
The opinion can be found here.
By Jason A. Wrubleski
This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.
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