Amgen, Inc. v. Human Genome Sciences, Inc.

Informative decision only: persuasive authority, not binding precedent. When an interference party's utility-based unpatentability motion has been granted and the Board has entered judgment, the Board may, in its case-specific discretion, decline to reach a remaining patentability motion (here, 35 U.S.C. 102(e)/103 over the opponent's involved patent) that has not been fairly raised and fully developed, and a party seeking rehearing cannot show the Board overlooked or misapprehended anything by not reaching it. Because the Board may decline even a fully developed issue, it necessarily may decline an undeveloped one, leaving it to the examiner in the first instance. No prior Board precedent directly addressed this issue; the decision applies Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 2002), which says the Board may, but need not, decide issues fairly raised and fully developed. For the party seeking unpatentability of the opponent's claims, a motion deferred to the priority phase will not be decided after a utility judgment ends the interference, and the movant cannot demand that the Board finish developing it. For the party whose application is attacked, the decision means it can obtain deferral of antedating proof, avoid an opposition, and then see the unreached motion left for examination without prejudice. The Board relied on Berman (including its statement that 35 U.S.C. 6 is an enabling provision), Brenner v. Manson, 383 U.S. 519 (1966), and Ewing v. Fowler Car Co., 244 U.S. 1 (1917), for the absence of any private right of opposition. LEGAL TEST OR STANDARD: The decision to exercise discretion to reach an issue is "necessarily case-specific and depends on a variety of considerations such as the issues raised and the status of the case, the parties, and the tribunal." A pertinent consideration here was whether the motions "have been fairly raised and fully developed." The Board may exercise its discretion not to reach even a fully developed issue. TRIGGERING FACTS: Amgen's motion 1 holding all involved HGS claims unpatentable for lack of utility was granted and uncontested on rehearing. HGS motion 2 was only a request to authorize a motion, deferred pending the utility decision. HGS motion 4 (35 U.S.C. 102(e) or 103) was deferred at Amgen's request until the priority phase, with no opposition or antedating evidence filed. HGS sought rehearing of the judgment only to obtain decisions on those two motions. KEY QUOTE: "Since the Board may exercise its discretion not to reach even a fully developed issue, it cannot have overlooked or misapprehended its obligations in deciding not to reach issues not fully developed." (Paper 79, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision follows Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 2002), and cites LeVeen v. Edwards, 57 USPQ2d 1416 (BPAI 2000), for deferring antedating efforts until the priority phase. PRACTICE TIP: If you want the Board to decide a patentability motion before judgment, make sure it is fully developed and not left deferred. Do not assume a deferred motion survives a dispositive ruling on another ground. Raise any concern about the deferral before judgment, and expect the issue to be left to the examiner.