Absolutely good news for Idenix:Order—Request for Panel Rehearing—Bd.R. 125(c)(5)
(1) Junior Party Jeremy Clark (“Clark”) has requested a rehearing by the panel (hereinafter the “Request”1) of the April 11, 2014 Decision on Storer’s Response to the Board’s Order to Show Cause (hereinafter the “Decision”) which concluded that Storer had shown sufficient cause why judgment should not be entered against it at that time. Decision at (3). Specifically, the Board concluded that, because Storer had filed an action in the U.S. District Court of Delaware seeking review of the Board’s judgment in interference No. 105,8714 (the “’871 interference) under 8 35 U.S.C. § 146, the Board’s judgment in that interference was not final and that Storer was not barred by interference estoppel or issue preclusion from arguing that its involved claims were not unpatentable for lack of enablement under 35 11 U.S.C. § 112. Id. Clark now seeks rehearing of the Decision by the panel.
(2)Clark argues that the Decision overlooked or misapprehended that, notwithstanding the pendency of a § 146 action, the doctrine of interference estoppel attaches upon judgment in a first interference and precludes a party that loses that first interference from relitigating in a second interference any issue that it raised (or could have raised) in the first interference. Request at 2 (citing Bd.R. 19 127(a)(1)). Specifically, Clark points out to Bd.R. 127 which provides that:
(a) Effect within Office—
Estoppel. A judgment disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party’s failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment.
Bd.R. 127(a)(1) (emphasis added by Clark). According to Clark, once judgment issues, interference estoppel is immediately triggered within the Patent Office. Request at 4. (citing, e.g., Dawson v. Dallavalle, Interference No. 105,569, Paper No. 43, Judgment, p. 5:10-11 (B.P.A.I. Sept. 18, 2007) (“[w]hen a judgment is entered in an interference, the estoppel provisions of 37 C.F.R. § 41.127(a) become applicable.”)).
Clark argues that this construction is consistent with the interference rules’ goal; viz., the just, speedy, and inexpensive resolution of every proceeding before the Board. Request at 4 (citing Bd.R. 1(b)). Clark contends that entry of judgment against Storer in the present interference benefits not only Clark, but also the Board and the public. Request at 4. Indeed, argues Clark, the fact that Storer has sought court review of the Board’s decision confirms that the estoppel provisions of Bd.R. 127(a)(1) were triggered because district court review is only proper once the Board enters judgment that disposes of all the issues that were, or by motion could have properly been, raised and decided. Id.at 4-5. (citing, e.g., Human Genome Sciences, Inc. v. Genentech, Inc., 589 F.Supp.2d 512, 519 (D. Del. 2008) (“District courts may only review a final judgment by the Board, disposing of all 27 issues that were, or by motion could have properly been, raised and decided”).
Clark maintains that Bd.R. 127 does not create any exception to estoppel in instances when the Board’s decision is undergoing district court review pursuant to 2 § 146. Request at 5. Rather, argues Clark, the rule explicitly states that the prior judgment has estoppel effect “within the Office.” Id. According to Clark, the fact that there may be further proceedings before some other tribunal—either a district court or the Federal Circuit—is irrelevant under the text of Bd.R. 127(a)(1). Id. Clark argues that once the Board issues judgment in a first interference, it would be a waste of resources for the Office to consider the same or substantially identical issue in a second interference just because the first decision is under judicial review. Id. Instead, argues Clark, the rules provide that the Board should apply interference estoppel in the second interference, enter judgment to that effect, and permit both decisions to receive judicial review simultaneously, thereby conserving Board resources. Id. Clark argues further that the Board erroneously relied on In re Deckler, 977 14 F.2d 1449 (Fed. Cir. 1992) as demonstrating that Storer should not be estopped by interference estoppel or issue preclusion because the decision in the ’871 16 Interference was not yet final. Request at 5. Clark argues that Deckler does not address the impact of a pending § 146 action on finality, but rather addressed an instance where the appellant had previously lost an interference, did not challenge the results of that interference, but subsequently, tried to challenge the result of the interference at the Federal Circuit after the claims were rejected in prosecution. Request at 6 (citing Deckler, 977 F.2d at 1450-51). According to Clark, the Federal Circuit held that interference estoppel applied where the appellant did not challenge the results of the interference or that his claims at issue were patentably indistinguishable from the lost interference count. Clark argues therefore that Deckler did not involve either a § 146 action or a situation where there were multiple interferences and that Deckler confirms the notion that interference estoppel is in harmony with the well-settled principles of res judicata and collateral estoppel.
CONTINUED.....
