Expiration Of Patent Does Not Divest A Court Of Jurisdiction In A § 291 Interference Proceeding

This article previously appeared in Last Month at the Federal Circuit, September 2011

Judges: Lourie (author), Plager, Dyk (concurring-in-part and dissenting-in-part)

[Appealed from D. Del., Judge Robinson]

In Genetics Institute, LLC v. Novartis Vaccines & Diagnostics, Inc., No. 10-1264 (Fed. Cir. Aug. 23, 2011), the Federal Circuit affirmed the district court's dismissal of an interference action under 35 U.S.C. § 291 for lack of an interference in fact.

Genetics Institute, LLC ("Genetics") is the assignee of U.S. Patent No. 4,868,112 ("the '112 patent"). Novartis Vaccines and Diagnostics, Inc. ("Novartis") is the assignee of U.S. Patent Nos. 6,228,620 ("the '620 patent") and 6,060,447 ("the '447 patent") (collectively "the Novartis patents"). The patented technology-at-issue relates to truncated forms of a protein called Factor VIII, which is an essential blood-clotting protein that circulates freely in the blood in an inactive state. The Factor VIII protein contains several regions, or domains, including an A, B, and C domain. Each domain folds into a three-dimensional structure independent of the other domains. The C domain contains an acidic region, a3, as well as domains A3, C1, and C2.

Genetics sued Novartis to determine priority of invention under 35 U.S.C. § 291, alleging that an interference in fact existed between certain claims of the '112 patent and the Novartis patents. Genetics asserted that all three patents are directed to the same subject matter, truncated Factor VIII proteins lacking all or part of the B domain while retaining procoagulant activity. Novartis moved to dismiss, arguing that (1) the district court lacked subject matter jurisdiction because a 35 U.S.C. § 156 patent term extension of the '112 patent did not apply to all of its claims; and (2) there was no interference in fact between the asserted claims because the Novartis patents—unlike the '112 patent—are directed to truncated Factor VIII proteins that preserve the functional a3 acidic region. The district court granted Novartis's motion to dismiss, holding that while the patent term extension under § 156 applied to all of the '112 patent claims, there was no interference in fact as to any of the allegedly interfering claims. Genetics appealed.

"Unlike a disclaimed claim, however, an expired patent is not viewed as having 'never existed' . . . [and] '. . . does have value beyond its expiration date.'" Slip op. at 13 (citation omitted).

The Federal Circuit rejected Novartis's argument, initially raised in a motion to dismiss Genetics' appeal, that...