Discovery is permitted in review of interference judgment
Human Genome Sciences, Inc. v. Amgen, Inc. et al., C.A. No. 07-526-SLR-MPT, April 8, 2008.
Thynge, M.J. The Court agrees to consider priority along with other issues previously presented to the Board of Patent Appeal and Interferences and finds discovery is appropriate.
Plaintiff filed this action under 35 U.S.C. §146 seeking review of the judgment entered July 27, 2007 by the Board of Patent Appeals and Interferences by which the Board determined plaintiff to be the junior party and defendant to be the senior party with regard to the ‘381 Interference. A dispute arose concerning the scope of the Court’s review and whether discovery was appropriate. The subject matter of the ‘381 Interference was defined by a single count directed to a tumor necrosis factor receptor (“TNFR”) family polypeptide called TRAIL Receptor-2 (“TR-2”). The Board considered and ruled on various motions including the proper scope of the interference, the filing date of various applications, whether plaintiff’s claims were patentable as well as various evidentiary issues including the admissibility of certain witnesses and evidence. Following the Board’s decision on the parties’ motions, plaintiff requested reconsideration of the part of the decision holding its involved claims unpatentable under 35 U.S.C. § 102(e). Plaintiff argued that a decision on that motion should have been deferred rather than decided on the merits. The Board noted that plaintiff’s request for deferral was untimely and in any event, it had filed an opposition which was considered as part of the Board’s ruling. On June 1, 2007, plaintiff was put under an order to show cause why this interference should be allowed to continue and judgment should not be entered against it in light of the Board’s prior determinations that plaintiff’s claims were unpatentable. Plaintiff argued that (1) the Board is statutorily obligated to decide priority of invention and (2) plaintiff will prevail on priority. The Board issued a judgment against plaintiff.
The Court finds that the issue of priority was raised adequately below and is proper before the Court. The Court rules that the parties may conduct discovery on the priority issue. Noting the Federal Circuit’s silence on whether a district court may properly restrict the admission of testimony on an issue raised before the Board, the Court finds that the parties should be permitted to take discovery concerning the remaining issues which were raised before the Board.
A full copy of the opinion is available here.
