Summary
ruling that judicial review, limited to issues fully addressed and argued to the administrative agency, is "consistent with the modern scheme of administrative law in which specialized agencies are responsible for initial decisions of complex factual and legal matters"
Summary of this case from University of Massachusetts v. Roslin InstituteOpinion
Civil Action No.: 00-1720 (RMU), Document No.: 34
October 6, 2003
Robert D. Huntington, Burns, Doane, Swecker Mathis, LLP, Alexandria, VA for Plaintiff
Charles L. Gholz; Andrew M. Ollis; Frank J. West, James J. Kelly, Oblon, Spivak, McClelland, Maier Neustadt, Alexandria, VA, for Defendant
Charles R. Wolfe, Jr., Blank, Rome, Comisky McCauley, LLP, Washington, DC, for Defendant
Roger L. Browdy, Browdy Neimark, P.L.L.C., Washington, DC, for Defendant
MEMORANDUM ORDER
This matter comes before the court on the defendant's motion to preclude consideration of certain issues and evidence. Plaintiff Goliath Hundertzehnte Vermoegensverwaltungsgesellschaft mbH brings suit seeking judicial review of a ruling of the Board of Patent Appeals and Interferences ("the Board"). The Board has jurisdiction, inter alia, to determine the priority of patents, and determine questions of patentability. 35 U.S.C. § 135. In the underlying proceeding, Goliath sought to establish priority over the defendant Yeda Research Development Co., Ltd.'s patent regarding a biological protein. Among the several motions filed by the parties was a defense motion for a ruling that the claims of the plaintiff's patent were unpatentable over prior art due to the failure of its underlying German patent applications to satisfy the description requirements of 35 U.S.C. § 112. The Board agreed with the defendant and granted that motion, concluding that the plaintiff's claims were unpatentable. Having ruled on this motion, the Board did not address any of the 17 remaining motions, concluding that they were moot. The plaintiff then appealed to this court.
Both parties in this case agree that this court may decide all issues that were raised before the Board. Rexam Indus. Corp. v. Eastman Kodak Co., 182 F.3d 1366, 1370 (Fed. Cir. 1999). The defendant, however, argues that if the court reverses the Board's decision, the court should remand the case to the Board for further inquiry on the remaining issues raised in the Board proceeding. The plaintiff argues that judicial economy dictates that the court rule on all issues raised at the Board hearing.
According to the Federal Circuit,"[t]he public interest in ensuring that only those patents that claim patentable subject matter are issued and maintained is best served when a district court considering review of a decision of the Board resolves all issues of priority and patentability that have been raised and fully developed." Rexam, 182 F.3d at 1370 (emphasis added). By first allowing the Board to make factual and legal findings, the court can take advantage of the Board's specialized knowledge of the complex patent issues in dispute. Remanding to the Board any unaddressed issues in highly technical cases such as the case at bar "would be consistent with the modern scheme of administrative law in which specialized agencies are responsible for initial decisions of complex factual and legal matters but are accountable on review to Article III judges." Plumley v. Mockett, No. CV 98-6117, slip op. at 9 (C.D. Cal. June 4, 1999).
Accordingly, it is this 6th day of October, 2003,
ORDERED that the defendant's motion to preclude consideration of certain issues and evidence is hereby GRANTED; and it is
FURTHER ORDERED that:
The defendant shall have a period to conduct scientific experimentation relevant to the case ending on January 5, 2004. The defendant shall provide reasonable opportunity for Plaintiff's counsel or experts to observe any experimentation; and it is ORDERED that the defendant's expert report in accordance with F.R.Civ.P. 26(a)(2) shall be submitted by February 2, 2004; and it is
FURTHER ORDERED that a period for deposing witnesses shall commence February 3, 2004 and end April 5, 2004; and it is
ORDERED that discovery shall be completed on or before June 7, 2004; and it is
FURTHER ORDERED that the parties file:
Dispositive motions on or before August 2, 2004;
Oppositions on or before September 6, 2004;
Replies on or before September 20, 2004; and it is
ORDERED that the interim status conference set for January 8, 2004 is vacated and reset for June 10th, 2004 at 4.45 am and it is
FURTHER ORDERED that counsel comply with all directives set forth in this court's Standing Order issued for this case and posted at http://www.dcd.uscourts.gov/RMUrbina-page.html.
SO ORDERED.