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Board of Trustees of the Leland Stanford Junior University v. Chinese University of Hong Kong

Discovery Taken in District Court in § 146 Appeal is a Nullity Post-Biogen

Board of Trustees of the Leland Stanford Junior University v. Chinese University of Hong Kong, (Fed. Cir. June 27, 2017) (O’MALLEY, Reyna, Chen) (3 of 5 stars)

Fed Cir vacates cancellation of Stanford’s patent claims following interference proceedings due to written description issues. The claims related to methods for detecting fetal aneuploidies (abnormalities in the number of fetal chromosomes). After the PTAB found Stanford’s claims unpatentable, Stanford appealed to the Northern District of California as per § 146. Subsequently, Biogen, 785 F.3d 648 (Fed. Cir. 2015), held that, for post-AIA interferences, the Federal Circuit (not district court) is the exclusive appellate tribunal from Board interference decisions, and the appeal was subsequently transferred to the Fed Cir. The opinion declines to take up Stanford’s argument that Biogen was incorrectly decided. The opinion notes that the Supreme Court denied certiorari in that case, and thus Biogen remains controlling law.

The opinion rejects Stanford’s argument that discovery taken while the case was in N.D. Cal. (including expert discovery) can be taken into account in reviewing the Board’s interference decisions. “Given that the district court did not have subject matter jurisdiction to review the Board’s interference decisions, Stanford’s attempt to include evidence elicited during proceedings there is inappropriate—the activities in the district court are a nullity[.]” Op. at 12.

On the record before that was before it, the Board erred in relying on certain testimony from CUHK’s expert as to how a person of skill would have read various references in Stanford’s specification at the time of the invention. The testimony failed to cite support for its conclusions, and Stanford had assembled counterevidence. As such the Board should not have relied in an unquestioning way on the testimony in question. Nor should the Board have presumed that a reference in Stanford’s specification could only disclose one technique, or another; it could have disclosed both.

KEYWORDS: INTERFERENCE; SECTION 146; WRITTEN DESCRIPTION