SNIPR Technologies Ltd v. Rockefeller University

Before Chen, Wallach, and Hughes. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.

Summary: Patents whose priority is governed exclusively by the AIA are not subject to interference proceedings.

The Patent Trial and Appeal Board declared an interference between five patents owned by SNIPR, all of which were governed by the AIA, and one pre-AIA patent owned by Rockefeller.  The Board cancelled all of the claims of the SNIPR patents in the interference.  SNIPR appealed, arguing that its patents should not have been subject to interference proceedings because they are governed by the first-inventor-to-file provisions of the AIA, rather than the pre-AIA first-to-invent system.

The Federal Circuit agreed with SNIPR and reversed, holding that “the text, purpose, and history of the AIA make clear that first-inventor-to-file patents exclusively governed by the AIA cannot be subject to an interference.”  Relying on the plain language of AIA § 3(n), the Federal Circuit held that the statute allowed only pre-AIA patents and mixed patents (i.e., patents with pre- and post-AIA claims) to be part of an interference.  The statute’s language states that the AIA amendments “shall” apply to any AIA patent, which “imposes a nondiscretionary duty” that the AIA applies and is “both mandatory and comprehensive.”  As further support, the Federal Circuit explained that Congress carved out one exception, allowing interferences for “mixed patents,” which further supports that AIA patents are not subject to interferences.  Thus, the Federal Circuit held that interferences do not exist for AIA patents. 

The Federal Circuit rejected the argument by Rockefeller and the USPTO Director, as intervenor, that the language “any unexpired patent” in pre-AIA § 135(a) allowed for interference proceedings challenging AIA patents.  Because courts construe “statutes, not isolated provisions,” the Federal Circuit interpreted “pre-AIA § 135 in light of the AIA and its effective date provisions in AIA § 3(n).”  Because interference proceedings were entirely replaced by derivation proceedings and all other references to interferences were removed from the statute, the Federal Circuit held that it is clear that the language “any unexpired patent” in pre-AIA § 135 cannot refer to pure AIA patents.