District of Massachusetts IP Blog

Stelara Patent Suit Ready For Trial

In a long standing dispute, Abbott and Centocor have been fighting over rights to antibody technology for treating psoriasis.  Abbott won an interference before the BPAI and sued Centocor for infringement by Centocor’s Stelara drug.  Centocor sought judicial review of the BPAI decision (originally in DC before being transferred here) and the parties filed a combined twelve motions for summary judgment in the D. Mass. suit.  In an omnibus opinion, Judge Saylor decided the universally relevant issues as follows:

Weapons Manufacturer Loads Another Round

An individual has brought suit against his former employer Atlantic Research Marketing Systems (West Bridgewater, MA) and another weapons manufacturer Samson Manuf. Corp. (Whately, MA) for patent infringement and a determination of patent priority pursuant to 35 U.S.C. §§ 146 and 291. 

This case is the latest in a long running series of disputes over firearms , in particular a modular hand grip which attaches to firearms.  Let’s step back a bit and review before we get into the details of this complaint. 

Appeal Filed Of BPAI Decision Awarding Priority To Application Dating Back To 1983

Siemens Healthcare Diagnostics, Inc. (Walpole, MA) filed suit under 35 U.S.C. § 146 to appeal the decision of the Board of Patent Appeals and Interferences in Interference No. 105,489 which ruled that defendant Enzo Life Sciences (Farmingdale, NY) first invented the subject matter in patent application 08/479,995 prior to the invention by Bayer (Siemens’ predecessor in interest) of the subject matter in Patent No. 5,124,246.  The technology in question involves assays utilizing polynucleotide sequences.

 

Enzo’s original priority date is March 5, 1983(!), which Siemens alleges was artificially extended through a “chain of applications.”  The patent from the ‘995 application would be Enzo’s first on out of the chain and would enjoy a 17 year term.

 

The complaint alleges a number of alleged failures by the BPAI (including failing to decide patentability under §§ 102 and 103, failing to find the interference time barred, etc.) but focuses its factual pleadings on the BPAI’s alleged failure to hold the patent unenforceable for prosecution laches.   

 

Siemens Healthcare Diagnostics, Inc. v. Enzo Life Sciences, Inc., 10-40124-TSH (D. Mass. July 9, 2010)

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)