Ever since the Supreme Court's decision in Dickerson v. Zurko, decisions from the U.S. Patent and Trademark Office (whether in ex parte examination or any of the many varieties of actions before the Patent Trial and Appeal Board) involving questions of fact are treated on appeal with almost overwhelming deference. This lesson was learned again by the losing party in an interference, styled Wilson v. Martin, where the PTAB held the claims corresponding to the count in the interference were anticipated by the prior art.
The interference was declared between Wilson's U.S. Patent No. 8,809,044 and Martin's U.S. Application No. 14/814,267. The claims of the '044 patent were directed to methods for using a cell culture apparatus comprising semipermeable membranes (that permit passage of gas but not liquids like culture media). The culture apparatus comprises multiple vertical shelves with two or more compartments for culturing cells wherein cells and the liquid culture media are placed:
Martin's '276 application is also directed to a liquid cell culture apparatus having two or more compartments having a gas permeable membrane.
The count in the interference is identical to claim 1 of the '044 patent:
1. A method of culturing animal cells in a gas permeable multi-shelf cell culture apparatus, the method comprising:
adding animal cells and media into a gas permeable multi-shelf apparatus comprising two or more culture compartments, each compartment including a shelf comprised of gas permeable, liquid impermeable material for cells to reside upon, each shelf connected to an opposing surface, a fluid pathway shared by said culture compartments, and each said shelf is in contact with a gas space,
whereby said apparatus is incubated in the presence of ambient gas suitable for animal cell culture, oriented in a position such that said culture compartments are located one above the other, each said shelf is in a horizontal position with said gas space located below it, animal cells reside upon at least a portion of each said shelf, said culture compartments include media in contact with said shelf and said opposing surface, and ambient gas resides within each said gas space and is in contact with each shelf.
For comparison, the opinion set forth claim 2 of the '267 application:
2. A method of culturing cells in a gas permeable multi-shelf cell culture apparatus, the method comprising:
adding cells and media into a gas permeable multi-shelf apparatus comprising two or more culture compartments, each compartment including a shelf comprised of gas permeable, liquid impermeable material for cells to reside upon, each shelf connected to an opposing surface, a fluid pathway shared by said culture compartments, and each said shelf is in contact with a gas space,
whereby said apparatus is incubated in the presence of ambient gas suitable for cell culture, oriented in a position such that said culture compartments are located one above the other, each said shelf is in a horizontal position with said gas space located below it, cells reside upon at least a portion of each said shelf, said culture compartments include media in contact with said shelf and said opposing surface, and ambient gas resides within each said gas space and is in contact with each shelf.
The italicized "ambient gas" term italicized in each claim was the basis for the PTAB's invalidation of Wilson's claims and the Federal Circuit's review.
Martin filed a motion in the interference that a prior art reference to Toner (U.S. Patent No. 6,759,245) anticipated most of Wilson's claims-in-interference corresponding to the Count, supported by two expert witness declarations. The Toner reference discloses "systems and methods for culturing animal cells using modular cell culturing devices with gas-permeable membranes" having structures with common (left, 222) or individual (right, 20) oxygenated fluid compartments:
The parties proposed different constructions for the term "ambient gas" that were not used by the Board, which did not construe the term because the Toner reference, in its opinion, disclosed the "ambient gas' limitation using either of the proposed constructions.
The Board held that the reference disclosed a multiplicity of ports that communicate between the interior and exterior of the device that would permit outside air to enter the device. The gas could be air or other oxygenated "fluid" and that "ambient gas" describes "[a]ir passing from the exterior of the device into the interior of the device" supported by Martin's expert who averred that "the common gas space inside the device is open to the ambient environment for venting air or the mixture of air with other gases supplied into the gas space via the inlet."
Wilson contended before the Board that the Toner reference did not anticipate its claims-in-interference because it required the gas to be "pumped or forced into the device." The Board rejected this interpretation because the reference disclosed "static, as well as directional, flow of the oxygenated fluid." The Board also rejected Wilson's characterization of the nature of the gas disclosed in the Toner reference as having "carefully controlled characteristics different from 'those found in standard ambient cell culture conditions,'" stating that the gas in Toner needs merely to be "ambient" (albeit conceding that Toner does not expressly use the word "ambient" but that it is "inherent or otherwise implicit" in the reference, citing Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991)).
Finally, the Board refused to preclude Martin from asserting the Toner reference for disclosing the "ambient gas" reference based on judicial estoppel because assignee Corning (the real party in interest) had made inconsistent statements during prosecution of the parent application to the '267 application-in-interference, inter alia because the Board could rely on the expert testimony before it from both parties.
Consequently, the Board held that all Wilson's claims in the '044 patent at issue in the interference were invalid as being anticipated or obvious over the Toner reference. Wilson appealed.
The Federal Circuit affirmed, in an opinion by Judge Reyna joined by Chief Judge Prost and Judge Stoll. With regard to the Board's anticipation determination, the panel found that this conclusion was supported by the written description of the Toner patent and the figures set forth therein. Important in this outcome was Wilson's argument that Toner only disclosed embodiments wherein the gas was provided by a gas tank (and thus not "ambient"), where the Federal Circuit pointed to Figure 8A not showing a gas tank and disclosure that embodiments having a gas tank as the source of gas were "preferable" but not required. Further, the panel credited (and gave deference to) the Board's consideration of Martin's expert. Despite the absence of the conventional bases for giving deference to expert witness testimony at trial (that the factfinder can observe the witness' demeanor, for example, which the Board cannot, relying on only the written record and portions of deposition transcripts), the Federal Circuit states that "the Board was entitled to weigh and credit that testimony," citing Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982); and Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Under the substantial evidence standard, the panel held that the Board's determination was "such that a reasonable mind might accept as adequate to support the Board's conclusion," citing Fleming v. Escort Inc., 774 F.3d 1371, 1375 (Fed. Cir. 2014).
The panel also rejected Wilson's other arguments, that the expert witness testimony was extrinsic evidence, stating that "[e]xtrinsic evidence may be used to interpret the allegedly anticipating reference and to shed light on what it would have meant to a person of ordinary skill in the art," citing Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018) (citing In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)). The panel held that the expert's testimony was consistent with the disclosure in the Toner reference and did not "provide missing disclosure of the claimed invention." In like manner, the panel rejected Wilson's arguments regarding differences between "air" as disclosed in the Toner reference and "ambient gas" recited in its claims, based on its previous rejection of Wilson's argument (reiterated here) that Toner required a gas tank, and again in reliance on Martin's expert declarations.
Turning to the question of judicial estoppel (that "where a party successfully urges a particular position in a legal proceeding, it is estopped from taking a contrary position in a subsequent proceeding where its interests have changed," citing Data Gen. Corp. v. Johnson, 78 F.3d 1556, 1565 (Fed. Cir. 1996) (citing Davis v. Wakelee, 156 U.S. 680, 689 (1895)), the panel states that the Board has the authority to apply the doctrine. The opinion then sets forth the factors to be considered in deciding to apply judicial estoppel:
(1) whether a party's later position is "clearly inconsistent" with its earlier position; (2) whether a court has accepted the party's prior position, such that accepting its "inconsistent position in a later proceeding would create the perception that either the first or the second court was misled"; and (3) whether the party changing its position "would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped,"
citing New Hampshire v. Maine, 532 U.S. 742, 751 (2001). The standard of review for this Board determination is abuse of discretion (an even more deferential standard) and the Federal Circuit held that the Board's decision here satisfied those criteria. The opinion notes two distinctions in support of its decision. The first is that the purported arguments made in the related prosecution were made regarding an embodiment of the Toner invention different from the ones at issue here (specifically, Figure 8b, rather than Figure 8a which the Board relief upon here). The purportedly inconsistent argument is based, according to the opinion, on the different configuration of the two embodiments and are thus not inconsistent and no not raise the estoppel. The second basis for finding no abuse of discretion is that "Martin's current position is not clearly inconsistent with Corning's prior statements because those statements were made in a different context and were part of a different evidentiary record," specifically that the claims in the earlier, related patent were directed to the structural components of the apparatus rather than methods for culturing cells with it. Indeed, according to the panel opinion the claims of this earlier patent did not recite the "ambient gas" limitation. Finally, the Court held that the differences in context between ex parte examination and the interference here (specifically the expert testimony) was sufficient to support the conclusion that the Board did not abuse its discretion.
Of course, anyone familiar with interference practice will recognize that a finding of anticipation of one party's claims in interference will usually result in the moving party's claims also being held to be anticipated, and that is the final conclusion in the opinion, i.e., all claims in interference were held anticipated by the Toner reference. The Federal Circuit, at least, awarded Martin its costs.
Wilson v. Martin (Fed. Cir. 2019)
Nonprecedential disposition
Panel: Chief Judge Prost and Circuit Judges Reyna and Stoll
Opinion by Circuit Judge Reyna
