By Donald Zuhn —

Last month, in University of Southern California v. DePuy Spine, Inc., the Federal Circuit vacated and remanded a decision by the Board of Patent Appeals and Interferences awarding priority to Appellee DePuy Spine, Inc. in an interference between DePuy's U.S. Patent No. 6,812,211 and U.S. Patent Application No. 10/230,671.  Appellants University of Southern California and Ampac Biotechnology, Inc. ("USC") filed the '671 application on August 29, 2002, and in 2005, copied claims from the '211 patent into their application.

The Board declared an interference, defining Count 1 as claim 1 of the '211 patent, which recites:

1.  A method of treating in a living being an intervertebral disc having a nucleus pulposus, comprising the step of:
    a) injecting a composition consisting essentially of a crosslinking agent into the nucleus pulposus,
    wherein the crosslinking agent is injected in an effective amount to cause in-situ crosslinking of native proteins present in the nucleus pulposus.

The Board originally designated USC as the senior party, according the '671 application the benefit of U.S. Provisional Application No. 60/316,287, which was filed on August 31, 2001 (the '211 patent issued from an application filed on March 19, 2002).  The Board then determined that the specification of the '287 application did not expressly disclose one of the limitations in Count 1, and granted DePuy's motion to deny USC the benefit of the '287 application's filing date.  USC responded by moving to substitute a new count (Count 2) that omitted the undisclosed limitation, but the Board rejected the count as invalid over the prior art.  After finding DePuy's claim 1 to be obvious over the prior art, the Board proposed a new count (Count 3), which it defined as claim 24 of the '671 application.  Claim 24 recites:

24.  A method of improving the resistance of an intervertebral disc to mechanical degradation by treating in a living being the intervertebral disc having a nucleus pulposus which is degraded or subject to ongoing degradation, comprising the step of:
    a) injecting a composition consisting essentially of a crosslinking agent into the nucleus pulposus,
    wherein the crosslinking agent is injected in an effective amount to cause in-situ crosslinking of native proteins present in the nucleus pulposus.

In response to the Board's request for comments regarding the proposed count, USC noted that the proposed count retained the undisclosed limitation, and therefore, that it would be prevented from relying on the '287 application as proof of priority.  USC proposed claim 7 of the '671 application as an alternative count.  Claim 7 recites:

7.  A method of improving the resistance of a collagenous tissue having pyridinoline cross links to mechanical degradation comprising the steps of:
    contacting at least a portion of a load bearing collagenous tissue within a human body with an effective amount of a crosslinking reagent having at least one crosslinking agent under conditions    within physiologic limits to prevent tissue overheating,
    wherein the collagenous tissue is an intervertebral disc.

The Board rejected USC's request to modify the count as well as USC's request for authorization to file a motion to change the count, and awarded priority to DePuy.

While the Federal Circuit found that the Board did not err in determining that the phrase "in a living being" in the preamble of Count 3 constituted a limitation, the Court vacated the Board's decision awarding priority to DePuy because the Board "adopted a count that prevented USC from relying on its provisional application — which USC argues is its best proof of priority — and repeatedly rejected USC's requests to modify the count."  The Board did so even though it "has recognized that allowing a party to rely on its best proofs of priority 'is an accepted reason in interference practice for granting' a motion to modify the count," citing Grose v. Plank, 15 U.S.P.Q.2d 1338, 1341 (B.P.A.I. 1990).

The Court noted that the Board failed to "offer any coherent justification for declining to modify the count so USC could rely on its provisional application," and "perplexingly stated that USC 'only suggested a new count in a comment, but never actually moved for the new count,' despite the fact that the Board denied USC authorization to file such a motion."  The Federal Circuit concluded that "[t]he Board erred by insufficiently explaining its decision not to modify Count 3 to allow USC to claim priority to its provisional application," adding that "[t]his failure is particularly troublesome because a party typically should be allowed to rely on its best priority proofs."  In remanding the case back to the Board, the Court stated that USC should be afforded the opportunity to file a motion to change the count, and that "[t]he Board's decision must, at the very least, squarely address the issues USC raises and set out the reasoning supporting the Board’s conclusions in sufficient detail to permit meaningful review."

University of Southern California v. DePuy Spine, Inc. (Fed. Cir. 2012)
Nonprecedential disposition
Panel: Circuit Judges Bryson, Dyk, and Moore
Opinion by Circuit Judge Moore

By Donald Zuhn —

Last month, the Federal Circuit affirmed a decision by the District Court for the District of New Jersey dismissing Plaintiff-Appellant Dr. George Pieczenik's complaint for failing to state a claim on which relief could be granted, as well as dismissing his charge of copyright infringement and denying his request for compulsory mediation and motion for recusal.

Dr. Pieczenik is the inventor and owner of U.S. Patent No. 5,866,363, which is entitled "Method and means for sorting and identifying biological information, and which is directed to, inter alia, populations of oligonucleotides encoding peptide sequences of about 4 to about 12 L-amino acid residues, populations of peptides of about 4 to about 12 amino acid residues, and methods of producing a population of epitopic peptide sequences.  Dr. Pieczenik initiated the suit that led to the appeal by filing four separate complaints against 88 defendants, asserting infringement of the '363 patent as well as violation by some of the defendants of the Racketeer Influenced and Corrupt Organizations (RICO) statute.  The District Court dismissed the complaints sua sponte for failure to meet the minimum pleading requirements under the Federal Rules of Civil Procedure, and provided Dr. Pieczenik with an opportunity to correct the defects in a single consolidated amended complaint.  Following Dr. Pieczenik's filing of the consolidated amended complaint, all 88 defendants moved to dismiss the second complaint for failure to meet the requirements of Rule 12(b)(6) of the Federal Rules of Civil Procedure.  The District Court granted the motion, and Dr. Pieczenik appealed.

The Federal Circuit begins by noting that while pro se litigants are generally held to a lesser standard than lawyers with regard to whether a complaint should be dismissed for failure to state a claim, a complaint must still contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face (citing Hughes v. Rowe, 449 U.S. 5 (1980), and Ashcroft v. Iqbal, 556 U.S. 662 (2009)).  With respect to Dr. Pieczenik's infringement claim, which the District Court dismissed, the Federal Circuit explained that:

The complaint states that the '363 patent is infringed by defendant Invitrogen's sale of "vectors for the display of combinatorial libraries" and "DynaBeads for Phage Display and BioPanning," id. at 40; and by the purchase of combinatorial libraries produced by New England Biolabs by forty-one named defendants, namely: Abbott Laboratories, Abbott Laboratories, Inc., Amgen Inc., Amgen USA, Inc., AstraZeneca LP, AstraZeneca Pharmaceuticals LP, Baxter Diagnostics, Inc. (now Baxter Healthcare Corp.), Bayer Cropscience Inc., Biogen Idec Inc., Biogen Idec U.S. Corp., Boehringer Ingelheim Vetmedica, Inc., Boehringer Ingelheim Roxane, Inc., Bracco Diagnostics, Inc., Canon, U.S.A., Centocor Ortho Biotech Products, L.P., Centocor Ortho Biotech Services, LLC, Centocor Ortho Biotech, Inc., Daiichi Sankyo, Inc., E.I. du Pont de Nemours & Co., Dyax Corp., GE Healthcare Biosciences Bioprocess Corp., GE Healthcare Bio-Sciences Corp., GE Healthcare Inc., GE Healthcare Strategic Sourcing Corp., GlaxoSmithKline LLC, Howard Hughes Medical Institute, IDEXX Reference Laboratories, Inc., Invitrogen Corp., Millennium Pharmaceuticals, Inc., Monsanto Ag Products LLC, Monsanto Co., Novartis Corp., Novartis Pharmaceutical Corp., Novartis Vaccines and Diagnostics, Inc., OSI Pharmaceuticals, Inc., Shionogi Pharma Sales, Inc., Shionogi Pharma, Inc., Shionogi USA Holdings, Inc., Shionogi USA, Inc., Syngenta Crop Protection, Inc., and Syngenta Seeds, Inc.

On appeal, Dr. Pieczenik argued that the District Court erred in dismissing his counts of patent infringement, suggesting that "[t]he fact that amino acid sequence SER-VAL-SER-VAL-GLY-MET-LYS-PRO-SER-PRO-ARG-PRO was isolated and made by several defendants [and that this] came out of the combinatorial library claimed in Plaintiff-Appellant's '363 patent" was sufficient "evidence of infringement."  However, the Federal Circuit noted that Dr. Pieczenik did "not discuss the criteria of patent infringement or identify which of the named defendants isolated or made the asserted sequence."  (Dr. Pieczenik also failed to specify which of the 92 claims of the '363 patent the defendants had infringed, arguing that each defendant infringed "one or more claims of the '363 patent.")  The Court therefore concluded that:

No error has been shown in the district court's rulings as to the inadequacy of the complaint's recitation of the basis for the charges that any or all of the forty-one listed defendants infringed the '3[6]3 patent by purchasing libraries from NEB; that Invitrogen infringed the '3[6]3 patent through its sale of vectors for the display of combinatorial libraries and DynaBeads; or that any other defendant infringed the '3[6]3 patent by making, using, or selling any other product or process covered by the patent's claims.

While not directly related to the patent infringement claims, Dr. Pieczenik's arguments that the District Court erred by denying his motion for recusal and determining that he failed to state the premises of a claim for copyright infringement are somewhat interesting.  With respect to the motion for recusal, the Federal Circuit explained that:

Dr. Pieczenik recited seven grounds for recusal: (1) the possibility that Judge Pisano holds shares in any of the defendant public companies; (2) Judge Pisano's alleged favoritism toward opposing counsel; (3) Judge Pisano's denial of requested discovery; (4) Judge Pisano's failure to hold a Markman hearing; (5) Judge Pisano's "hidden agenda" as evidenced by consolidation of the four original actions into a single action; (6) Judge Pisano's failure to remove Milbank Tweed Hadley McCloy LLP as pro hac vice counsel in this matter; and (7) Judge Pisano's prejudices against pro se litigants, against Jewish litigants, against "scientists acting as lawyers," against inventors who litigate their patents, and against science generally.

In affirming the District Court's denial of the recusal motion, the Federal Circuit concluded, however, that "Dr. Pieczenik has not shown any basis for questioning Judge Pisano’s impartiality . . . or that Judge Pisano is or may be personally biased or prejudiced against Dr. Pieczenik."

In his motion in limine on the copyright claim, Dr. Pieczenik argued that the defendants violated his copyright by quoting, in their brief, statements made by him during a lecture to a biochemistry class at Rutgers University, relating to the ease and benefits of pro se litigation in federal court.  The Federal Circuit determined that to the extent that Dr. Pieczenik held a copyright to the lecture material, "this was a fair use of the quotation."

The Federal Circuit concluded by affirming the District Court's refusal to grant Dr. Pieczenik 's request for compulsory mediation, finding that the District Court did not abuse its discretion in declining to compel mediation.

Pieczenik v. Bayer Corp. (Fed. Cir. 2012)
Nonprecedential disposition
Panel: Circuit Judges Newman, Mayer, and Plager
Opinion by Circuit Judge Newman