By Donald Zuhn --
Last month, in University of Southern California v. DePuy Spine, Inc., the Federal Circuit vacated and remanded a decision by the Board of Patent Appeals and Interferences awarding priority to Appellee DePuy Spine, Inc. in an interference between DePuy's U.S. Patent No. 6,812,211 and U.S. Patent Application No. 10/230,671. Appellants University of Southern California and Ampac Biotechnology, Inc. ("USC") filed the '671 application on August 29, 2002, and in 2005, copied claims from the '211 patent into their application.
The Board declared an interference, defining Count 1 as claim 1 of the '211 patent, which recites:
1. A method of treating in a living being an intervertebral disc having a nucleus pulposus, comprising the step of:
a) injecting a composition consisting essentially of a crosslinking agent into the nucleus pulposus,
wherein the crosslinking agent is injected in an effective amount to cause in-situ crosslinking of native proteins present in the nucleus pulposus.
The Board originally designated USC as the senior party, according the '671 application the benefit of U.S. Provisional Application No. 60/316,287, which was filed on August 31, 2001 (the '211 patent issued from an application filed on March 19, 2002). The Board then determined that the specification of the '287 application did not expressly disclose one of the limitations in Count 1, and granted DePuy's motion to deny USC the benefit of the '287 application's filing date. USC responded by moving to substitute a new count (Count 2) that omitted the undisclosed limitation, but the Board rejected the count as invalid over the prior art. After finding DePuy's claim 1 to be obvious over the prior art, the Board proposed a new count (Count 3), which it defined as claim 24 of the '671 application. Claim 24 recites:
24. A method of improving the resistance of an intervertebral disc to mechanical degradation by treating in a living being the intervertebral disc having a nucleus pulposus which is degraded or subject to ongoing degradation, comprising the step of:
a) injecting a composition consisting essentially of a crosslinking agent into the nucleus pulposus,
wherein the crosslinking agent is injected in an effective amount to cause in-situ crosslinking of native proteins present in the nucleus pulposus.
In response to the Board's request for comments regarding the proposed count, USC noted that the proposed count retained the undisclosed limitation, and therefore, that it would be prevented from relying on the '287 application as proof of priority. USC proposed claim 7 of the '671 application as an alternative count. Claim 7 recites:
7. A method of improving the resistance of a collagenous tissue having pyridinoline cross links to mechanical degradation comprising the steps of:
contacting at least a portion of a load bearing collagenous tissue within a human body with an effective amount of a crosslinking reagent having at least one crosslinking agent under conditions within physiologic limits to prevent tissue overheating,
wherein the collagenous tissue is an intervertebral disc.
The Board rejected USC's request to modify the count as well as USC's request for authorization to file a motion to change the count, and awarded priority to DePuy.
While the Federal Circuit found that the Board did not err in determining that the phrase "in a living being" in the preamble of Count 3 constituted a limitation, the Court vacated the Board's decision awarding priority to DePuy because the Board "adopted a count that prevented USC from relying on its provisional application -- which USC argues is its best proof of priority -- and repeatedly rejected USC's requests to modify the count." The Board did so even though it "has recognized that allowing a party to rely on its best proofs of priority 'is an accepted reason in interference practice for granting' a motion to modify the count," citing Grose v. Plank, 15 U.S.P.Q.2d 1338, 1341 (B.P.A.I. 1990).
The Court noted that the Board failed to "offer any coherent justification for declining to modify the count so USC could rely on its provisional application," and "perplexingly stated that USC 'only suggested a new count in a comment, but never actually moved for the new count,' despite the fact that the Board denied USC authorization to file such a motion." The Federal Circuit concluded that "[t]he Board erred by insufficiently explaining its decision not to modify Count 3 to allow USC to claim priority to its provisional application," adding that "[t]his failure is particularly troublesome because a party typically should be allowed to rely on its best priority proofs." In remanding the case back to the Board, the Court stated that USC should be afforded the opportunity to file a motion to change the count, and that "[t]he Board's decision must, at the very least, squarely address the issues USC raises and set out the reasoning supporting the Board’s conclusions in sufficient detail to permit meaningful review."
University of Southern California v. DePuy Spine, Inc. (Fed. Cir. 2012)
Nonprecedential disposition
Panel: Circuit Judges Bryson, Dyk, and Moore
Opinion by Circuit Judge Moore
Comments