Challenge to BPAI Decision Fails; Judge Young Refuses to Reach Issues Unaddressed by the Board

Following an interference in the USPTO, AlphaVax appealed a BPAI decision (awarding priority of Patent No. 6,015,694 v. App. No. 10/683,781 to Novartis’ ’694 patent) to D. Mass. under 35 U.S.C. § 146.  AlphaVax seeks summary judgment of anticipation and lack of enablement, issues which the BPAI declined to address.  Novartis cross moves for summary judgment affirming the Board’s priority determination.  Judge Young affirmed across the board.

 

The first threshold issue for AlphaVax was whether D. Mass. had jurisdiction to decide anticipation and lack of enablement since the Board never addressed them.  AlphaVax argued that the Board was required to address those issues but failed to do so, making them properly considered by the District Court.  Judge Young disagreed, holding (based on the statute, legislative history, and Federal Circuit cases) that the Board is not required to decide questions of patentability in an interference proceeding.  The Court declined to reach the issues of anticipation and enablement noting that AlphaVax is free to challenge the resulting patent’s validity, just not in the § 146 appeal.  (Judge Young also noted that any later validity challenge would need to be proven by clear and convincing evidence, something not required in the context of an interference proceeding.)

 

AlphaVax lost again in its attempt to put on live witnesses on the priority issue, something allowed by § 146 but declined by Judge Young (citing two recent D. Mass. cases by Judges Wolf and Gorton coming out the same way).  The Court ruled that even though the Board does not hear live testimony, AlphaVax had the opportunity to present all of its evidence to the Board and the Board found that evidence insufficient, regardless of credibility.  Thus no new evidence was permitted.

 

AlphaVax’s challenges to the Board’s decisions also fell short with the Court ruling that the Board was supported by substantial evidence and reasonable on all other disputed issues.

 

AlphaVax, Inc. v. Novartis Vaccines and Diagnostics, Inc., 09-11176-WGY (D. Mass. June 29, 2010)