SGR Team Wins Federal Circuit Appeal for Patent Interference

On Friday, an SGR team cemented a victory on behalf of its client Yang when the U.S. Court of Appeals for the Federal Circuit ruled in its favor in an appeal brought by Chan related to a patent interference proceeding (Interference No. 106,025 (the ʼ025 interference)) (2016-1214).  The Court’s ruling affirmed the SGR team’s previous success before the Patent Trial and Appeal Board (PTAB), which resulted in judgment against Chan and cancellation of a number of claims of Chan’s U.S. Patent No. 8,614,197 (Chan’s ʼ197 patent).

The issues on appeal related to (a) whether the PTAB correctly declared an interference-in-fact between certain claims of Chan’s ʼ197 patent and the claims in Yang’s U.S. Patent Application No. 11/631,637 (Yang’s ʼ637 application) in the ʼ025 interference and (b) whether the PTAB correctly issued judgment against Chan and ordered Chan’s claims canceled without considering the patentability of the claims in Yang’s ʼ637 application.

During oral argument before Judge Newman, Judge Moore, and Judge Wallach, the panel focused on the PTAB’s application of the doctrine of interference estoppel against Chan, which prevents a party that has lost in a previous interference from asserting in a later interference between the same parties (a) any claim that is not patentably distinct from the claims cancelled in the previous interference and (b) any issue that was raised or could have been raised in the prior interference.  In affirming the appealed judgment and order, the Federal Circuit found no error in the PTAB’s rejection of Chan’s patentability challenge to the claims of Yang’s ʼ637 application based on Chan’s failure to timely raise the issue in the previous interference.

The ʼ025 interference was the second interference declared between the parties on subject matter relating to a compound extracted from the husk and fruit stem of Xanthoceras Sobifolia, its extracting method, and uses thereof.  The first interference proceeding (Interference No. 105,982), declared in late 2013, was resolved when Chan abandoned its priority contest to the subject matter at issue.  The subsequent judgment against Chan, and order by the PTAB in the ʼ982 interference resulted in the cancellation of the majority of claims of Chan’s U.S. Patent Nos. 7,262,285 and 7,524,824.

SGR attorney Stephanie Scruggs argued the appeal and was counsel for Yang on appeal.  SGR attorneys Jessica Zurlo, Tom Wiseman, Michael Schwartz, and Stephanie Scruggs were counsel for Yang in the ʼ982 and ʼ025 interferences before the PTAB.

A patent interference is a proceeding that is unique to the United States patent system and remains relevant for patents and patent applications filed before March 16, 2013.  The proceeding resolves priority disputes when the claims of two patents, a patent, and a pending patent application, or two patent applications cover the same subject matter.  Each party in an interference may present proof of a conception and reduction to practice of the invention at issue, as well as arguments and evidence on patentability and enforceability of the claims in dispute, and may challenge the other party’s evidence by cross-examination.  The evidence is briefed and argued before a three-member panel of administrative law judges.  The result is a final judgment declaring that one party is entitled to priority of invention (i.e., was the first to invent).  The losing party or parties in the interference are found not to be entitled to a patent on the contested invention.  In addition to interference work, SGR’s Post-Grant Team routinely handles AIA post-grant proceedings before the PTAB.

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