Matter is dismissed for lack of subject matter jurisdiction where no interference-in-fact is found
Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., Civ. No.08-290a-SLR, February 24, 2010.
Robinson, J. Defendant’s motion to dismiss for lack of subject matter jurisdiction is granted.
This is an action to determine the priority of certain patents assigned to defendants vis-à-vis plaintiff’s ‘112 patent. The patents are directed to procoagulant proteins. Plaintiff contends that certain claims of the defendants’ patents interefere with certain claims of the ‘112 patent. Defendant’s claim that plaintiff lacked standing to sue is rejected but preserved for appeal. The parties frame the anticipation analysis as an inquiry into whether the ‘620 patent discloses a species within the genus provided by the ‘112 patent. The Court applies instead a comparison analysis noting that there is a lack of homology between the amino acid deletion ranges contemplated by each patent. Accordingly, the invention of the '112 patent is not the invention of the '620 patent. The two-way test is not satisfied with respect to the '112 and '620 patents on anticipation. With respect to obviousness, the court concludes that a person of ordinary skill in the art would not have appreciated the importance of amino acids 1649-1689 based on the disclosure of the' 112 patent, which permitted deletions of that region. The court's conclusions regarding anticipation and obviousness are buttressed by the fact that the '112 patent is listed on the face of the '620 and '447 patents. Insofar as there is no interference-in-fact, the court need not make a priority determination. Therefore, defendants’ motion to dismiss for lack of subject matter jurisdiction is granted.
