Free Letter - District Court of Delaware - Delaware

Case 1 :07-cv-00526-SLR-IVI PT Document 37 Filed 05/13/2008 Page 1 of 2
Youno CoNAwAY STARGATT & TAYLOR, LLP
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m5}'l¤f}J@Y¤S€.¤0m WILMINGTON, DELAWARE §9899~0391 wwwyoungcunawayxcoln
May 13, 2008
BY E-FILE
The Honorable Mary Pat Thynge
United States District Court of Delaware
844 North King Street
Wilmington, DE 19801
Re: Human Genome Sciences, Inc. v. Amgen, Inc. et al.
· C. A. No.: 07-526-SLR-MPT
Reply to HGS’ Letter Regarding Issue of Priority for § 146 Appeal
Dear Judge Thynge:
Defendants Amgen and Immunex ("lmmunex") respectfully request an opportunity to
address the misstatements of fact and law in HGS‘ May 5, 2008 letter (D.I. 36) regarding
lm1nunex's request for clarification on the issue of priority on appeal (D.l. 35).
Immunex has always recognized that the scope of a 35 U.S.C. § 146 action includes both
issues raised by the parties and issues decided by the Board. Immunex Letter Brief Regarding
Issues on Appeal (D.l. 22), Section 1l(B), pp. 3-4; Memorandum Order (D.l. 33) 19:13-14 ("HGS
is correct that this court's § 146 review is not limited to issues decided by the Board and
Immunex acknowledges that in its submission"). However, Immunex has argued from the
( outset that the Court should not consider priority because priority involves many issues that were
not raised or fully developed before the Board. D.l. 22, Section 1l(D)(1), pp. 5-6 ("None of these
issues [conception, diligence, reduction to practice] were fully developed let alone decided by
_ the Board in the interference."). As this Court recently recognized, failure to adequately develop
the record at the Board level "leaves too much room for mischief in a § 146 appeal."
’ Memorandum Opinion in related District of Delaware case, Civ. No. 07-780, dated May 9, 2008
("May 9 Order"), 15:8-9.
Further, as the Court noted, HGS represented that the priority issues on appeal were the
issues raised in its priority motion. D.l. 33, 20: 14-15 ("HGS is seeking review on priority based
on legal theories setforth in its Motion 7.") Now, in light of lmmunex's request for clarification,
it is clear that HGS intends to conduct discovery on priority issues that were never raised before
the Board. lf the ruling that "the court will consider the priority issue" from the Memorandum
` Order (D.I. 33, 21 :3-4) is meant to include review of lmmunex's priority case, this would be is a
clear error of law premised upon a clear error of fact because HGS‘ filing of its priority brief does
not raise Immunex's priority case.
i As noted in the Memorandum Order, to qualify for consideration under § 146, a party
Q must raise an issue in the manner specified in the PTO's interference regulations, or undeniably
place the issue before the Board and insist that the issue be resolved. D.l. 33 at 17-18. ln the
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Case 1 :07-cv-00526-SLR-IVIPT Document 37 Filed 05/13/2008 Page 2 of 2
YOUNG CONAWAY STARGATT & TAYLOR, LLP
United States District Court of Delaware
May 13, 2008
interference below, the Board terminated the proceedings before Irnrnunex had an opportunity to
present its priority case. The dates for Immunex's priority case are stated in Immunex's priority
statement, but that statement does not "raise’° Immunex's priority case for consideration in a 146
action. "A significant body of case law leads to the conclusion that including a factual assertion
within a preliminary statement before the Board is not ’raising an issue’ within the meaning of
§146." Abbott Labs v. City of Hope, 224 F. Supp. 2d 1200, 1202 (ND. lil. 2002) (citing General
Instrument, 995 F.2d at 214; Conservolite, 21 F.3d at 1102). HGS’ response does not address the
black letter law that Immunex's priority case cannot be on appeal.
This Court recognizes that "it is clear that the fundamental purpose of interference
proceedings is to give the Board a full and fair opportunity to determine priority." May 9 Order,
15:2—3. Contra to this purpose, I-IGS requests that the Court consider Immunex's priority case
using its discretion under Conservolite. Compelling circumstances must be present, however, in
order for the Court to consider issues not raised before the Board in a § 146 action. Conservolite,
21 F.3d at 1102; Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 592 (Fed. Cir. 1997);
Memorandum Order, D.I. 33 at 22. HGS does not even suggest a compelling reason to consider
Immunex's priority case in this action. Without a compelling reason, consideration of Immunex's
priority is an "effective usurpation ofthe Board's original jurisdiction to determine priority."
May 9 Order, 15: 6-8.
HGS asserts, without support, that there is no such thing as half of a priority dispute. D.I.
36, p. 5. The only priority issues the Court considered in ruling that priority had been raised
below were the issues raised by I-IGS Motion 7. As noted, the Court‘s discretion to consider
issues not raised below is limited to compelling circumstances and none are present here. The
decision to exclude issues in a § 146 action that the Board did not decide is left to the sound
discretion ofthe Court and reviewable for abuse of discretion. General Instrument, 995 F.2d at
i 214. HGS requests that the parties` priority cases be decided together; Immunex agrees that such
( an action fosters judicial economy. However, the only appropriate forum at this juncture is the
Board of Patent Appeals and Interferences on remand, if remand is necessary after reviewing the
, Board decision on substantive motions. _
Immunex respectfully reiterates its request for clarification on this matter.
Respectfully,
/s/’ Melanie K Sharp
Melanie K. Sharp (No. 2501)
= cc: Clerk ofthe Court (Hand Delivery)
I John G. Day, Esquire (via e·mail)
Steven J. Balick, Esquire (via e»mai1)
I Lauren E. Maguire, Esquire (via e·mail)
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