United States Court of Appeals
for the Federal Circuit
__________________________
(Interference No. 105,744)
JOHN ROBERT ADAIR, DILJEET SINGH ATHWAL,
AND JOHN SPENCER EMTAGE,
Appellants,
v.
PAUL J. CARTER AND LEONARD G. PRESTA,
Appellees.
__________________________
2011-1212
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
__________________________
Decided: February 7, 2012
__________________________
DOREEN YATKO TRUJILLO, Cozen O’Connor, P.C., of
Philadelphia, Pennsylvania, argued for appellants. With
her on the brief was KYLE VOS STRACHE.
OLIVER R. ASHE, JR., Ashe, P.C., of Reston, Virginia,
argued for appellees. Of counsel on the brief were
JEFFREY P. KUSHAN and RACHEL H. TOWNSEND, Sidley
Austin, LLP, of Washington, DC.
__________________________
2 ADAIR v. CARTER
Before RADER, Chief Judge, LINN and MOORE, Circuit
Judges.
LINN, Circuit Judge.
Appellants John Robert Adair, Diljeet Singh Athwal,
and John Spencer Emtage (collectively, “Adair”) appeal a
decision of the Board of Patent Appeals and Interferences
(“Board”) holding that Adair’s single claim involved in
Interference 105,744 with junior party Paul J. Carter and
Leonard G. Presta (collectively, “Carter”) was barred
under 35 U.S.C. § 135(b)(1). Because the Board properly
determined that Adair’s claim was barred under
§ 135(b)(1), this court affirms.
I. BACKGROUND
On November 21, 2005, Adair filed U.S. Application
Serial No. 11/284,261 (“’261 Application”) with the United
States Patent and Trademark Office (“PTO”). In a pre-
liminary amendment filed concurrently with this applica-
tion, Adair requested an interference based on Carter’s
U.S. Patent No. 6,407,213 (“’213 Patent”). The only count
of the interference is drawn to humanized antibodies.
More specifically, the count involves non-human amino
acid substitutions on specific residues of the heavy chain
variable domain (an antibody comprises two light chains
and two heavy chains, each with a “constant” and “vari-
able” domain). On February 2, 2010, the Board declared
the interference, identifying the claims in the count to be
claims 30, 31, 60, 62, 63, 66, 67, 70, 73, 77-81 of the ’213
Patent and claim 24 of the ’261 Application. Carter v.
Adair, Interference No. 105,744, Declaration of Interfer-
ence at 4 (Feb. 2, 2010). The Board awarded Adair prior-
ity benefit to PCT/GB90/02017 (“PCT Application”), filed
December 21, 1990, which claims priority to a British
application filed by Adair on December 21, 1989.
ADAIR v. CARTER 3
Claim 66 of Carter’s ’213 Patent, representative of the
claims in the count and the basis for an interference-in-
fact, recites:
66. A humanized antibody heavy chain variable
domain comprising non-human Complementarity
Determining Region (CDR) amino acid residues
which bind antigen incorporated into a human an-
tibody variable domain, and further comprising a
Framework Region (FR) amino acid substitution
at a site selected from the group consisting of: 24H
[H=heavy], 73H, 76H, 78H, and 93H, utilizing the
numbering system set forth in Kabat.
’213 Patent col.88 l.66-col.89 l.6.
Corresponding claim 24 in Adair’s ’261 Application re-
cites:
24. A humanised antibody comprising a heavy
chain variable domain comprising non-human
complementarity determining region amino acid
residues which bind an antigen and a human
framework region wherein said framework region
comprises a non-human amino acid substitution
at a residue selected from the group consisting of
23, 24, 49, 71, 73, and 78, and combinations
thereof, as numbered according to Kabat.
’261 Application, Preliminary Amendment and Request
for Interference dated Nov. 21, 2005 at 3, as amended by
Amendment of Sept. 9, 2009 at 4 (added language empha-
sized).
Because Adair’s claim 24 was not presented to the
PTO prior to June 18, 2003, one year from issuance of the
Carter ’213 Patent (the “critical date”) as required by 35
U.S.C. § 135(b)(1), Adair relied on pre-critical date claims
4 ADAIR v. CARTER
1 and 16 of the PCT Application and corresponding U.S.
national stage Application No. 07/743,329 (“’329 Applica-
tion”) to avoid the bar of § 135(b)(1). Claims 1 and 16
recite:
1. A CDR-grafted antibody heavy chain having a
variable region domain comprising acceptor
framework and donor antigen binding regions
wherein the framework comprises donor residues
at at least one of positions 6, 23 and/or 24, 48
and/or 49, 71 and/or 73, 75 and/or 76 and/or 78
and 88 and/or 91.
16. A CDR-grafted antibody heavy or light chain
or molecule according to any one of the preceding
claims comprising human acceptor residues and
non-human donor residues.
PCT Application at 67-69. Adair originally relied on claim
8 of the PCT Application, but because that claim related
to light chains, Adair later abandoned that argument. In
its request for rehearing before the Board, Adair argued
for the first time that claim 2 of the PCT Application also
provided pre-critical date support for claim 24, but the
Board declined to consider this argument for the first time
on rehearing. Carter v. Adair, Interference No. 105,774,
Decision on Request for Rehearing at 4-5 (Nov. 5, 2010)
(“Rehearing”).
At the national stage, the examiner originally rejected
each of Adair’s PCT claims under one or more of the
following sections: 101, 102(b), 103, and 112 first and
second paragraphs. ’329 Application, Office Action of
November 18, 1992. Adair cancelled the PCT claims and
added claims 23-66, later cancelled by an amendment
adding claims 67-119 requiring multiple amino acid
substitutions at specific locations in the heavy chain. ’329
ADAIR v. CARTER 5
Application, Amendments of January 19, 1993 and April
16, 1993.
The Board rejected Adair’s argument that claims 1
and 16 in the PCT Application provide pre-critical date
support for claim 24 in the ’261 Application because: (1)
the PCT claims were not patentable to Adair; (2) Adair
added limitations to overcome the examiner’s rejection;
and accordingly, (3) material differences presumptively
existed between the post- and pre-critical date claims that
Adair failed to rebut. Carter v. Adair, Interference No.
105,774, Decision on Motions at 9-10 (Aug. 30, 2010)
(“Decision”). Citing Regents of the University of California
v. University of Iowa Research Foundation, 455 F.3d 1371,
1377 (Fed. Cir. 2006), the Board stated that “[a]n appli-
cant cannot expect to avoid the bar of § 135(b) by timely
copying a claim from an issued patent when that claim is
not patentable to that applicant.” Decision at 10-11. On
rehearing, the Board rejected Adair’s assertion that
materiality must be “determined in view of the patent
claims being copied” and declined to compare Adair’s post-
or pre-critical date claims with copied claim 66 from
Carter’s ’213 Patent. Rehearing at 3. Adair appeals, and
this court has jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
II. DISCUSSION
A. Standard of Review
“We review the Board’s construction of 35 U.S.C.
§ 135(b)(1) de novo, as statutory interpretation is a ques-
tion of law.” In re Berger, 279 F.3d 975, 980 (Fed. Cir.
2002).
6 ADAIR v. CARTER
B. Analysis
Adair argues that the Board erred by failing to assess
material differences “in view of the patent claim being
copied [claim 66 from Carter’s ’213 Patent].” Appellant
Br. 22. According to Adair, this court’s precedent does not
endorse a test that allows the Board to completely ignore
copied claim 66 from Carter’s ’213 Patent when assessing
the material differences between the post- and pre-critical
date claims. Adair argues that the materiality test from
Berger and Regents requires an assessment of material
limitations based on the “identity” between the post-
critical date claim and copied claim 66 from Carter’s ’213
Patent—in other words, in view of the “count”—and not
based on the post-critical date claim standing alone. See
Regents, 455 F.3d at 1375 (“[A]s this court’s precedent
explains, California must demonstrate that claims in the
’191 application provide pre-critical date support for the
post-critical date identity between claim 205 [the post-
critical date claim] and the ’646 patent [the issued pat-
ent].” (emphasis added)); Berger, 279 F.3d at 983.
Carter counters that the question of “[w]hether there
is a sufficient degree of identity between pre- and post-
critical date claims for compliance with § 135(b) is an
inquiry that is distinct and independent” from any com-
parison with the patent claims copied. Appellee Br. 33.
According to Carter, the Board correctly interpreted
§ 135(b)(1) in holding that “establishing support for post-
critical date claims does not entail looking at material
limitations of the patented claims.” Id. 42.
This court agrees with Carter. Section 135(b)(1)
states:
A claim which is the same as, or for the same or
substantially the same subject matter as, a claim
of an issued patent may not be made in any appli-
ADAIR v. CARTER 7
cation unless such a claim is made prior to one
year from the date on which the patent was
granted.
35 U.S.C. § 135(b)(1). Notwithstanding the seemingly
strict language of the statute, a limited exception to this
one year bar exists “where the copier had already been
claiming substantially the same invention as the pat-
entee” during the critical time period. Corbett v. Chis-
holm, 568 F.2d 759, 765 (CCPA 1977).
i.
In Corbett, the post-critical date claims “corre-
spond[ed] exactly” with issued “Chisholm patent” claim 1.
568 F.2d at 759. The Board rejected Corbett’s post-
critical date claims under § 135(b)(1). Id. Corbett relied
upon several groups of pre-critical date claims from the
application and a predecessor application in an attempt to
avoid the § 135(b) bar. Id. at 761-63. On appeal, this
court compared the “copied claim” with the pre-critical
date claims and affirmed the Board’s finding that mate-
rial differences precluded Corbett from relying on any of
the pre-critical date claims to overcome the § 135(b) bar.
Id. at 765-66. In identifying certain limitations of Chis-
holm patent claim 1 as “material,” the court was simply
noting the material differences that existed between that
claim as copied by Corbett after the critical date and those
pre-critical date claims Corbett was relying on to over-
come the § 135(b) bar. The court did not establish any
rule requiring some sort of threshold assessment of which
limitations of the copied patent claim are material before
determining whether material differences exist between
post- and pre-critical date claims. In making this com-
parison, the court referenced Chisholm patent claim 1
only because that was the post-critical date claim.
8 ADAIR v. CARTER
Similarly, in Berger, the post-critical date claim was
copied directly from and identical to issued “Muller pat-
ent” claim 1. 279 F.3d at 978. The examiner rejected
Berger’s pre-critical date claims 1-6 for indefiniteness and
other grounds, and rejected post-critical date claim 7
under § 135(b)(1). Id. at 979. The Board rejected Berger’s
argument that claims 1-6 provided pre-critical date sup-
port for claim 7 because it found material differences
between the “copied claim” and the pre-critical date
claims, and this court affirmed. Id. at 982 (“The Board
found the ‘circumferential groove’ limitation to be mate-
rial because it was added by Muller during prosecution to
avoid prior art. We agree with the Board’s determination
of materiality.”). Again, the court in Berger referenced
the issued Muller patent claim 1 only because the post-
critical date claim, claim 7, was a direct copy of the patent
claim. Id. at 981-83. This court affirmed the Board’s
analysis based only on the material differences between
the post- and pre-critical date claims. Id. at 983 (“Be-
cause Berger’s original claims 1-6 [the pre-critical date
claims] do not include a material limitation of Berger
claim 7 [the post-critical date claim], copied claim 7 is not
entitled to the earlier effective date of those original
claims for purposes of satisfying § 135(b).” (emphasis
added)).
In Regents, this court expressly approved an analysis
of material differences based solely on a comparison of the
post- and pre-critical date claims in order to obtain the
benefit of the earlier filing date:
The Board compared claim 205 [the post-critical
date claim] with claims 202-203 . . . and then with
claim 204 [collectively, the pre-critical date
claims]. The Board found that California’s claim
205 contained material differences from claims
202-204. Therefore, claim 205 could not benefit
from the earlier filing date of those claims. . . . On
ADAIR v. CARTER 9
appeal, California does not contest the Board’s
finding of material differences between claim 205
and claims 202-204. Instead, California chal-
lenges the Board’s conclusion that the correct in-
quiry under § 135(b)(1) asks whether claims 202-
204 contain material differences from claim 205
and not whether claims 202-204 are to the same
invention as claims in the ’646 patent.
455 F.3d at 1373. The court in Regents rejected Califor-
nia’s argument, explaining that “the relationship between
the post- and pre-critical date claims . . . is not only rele-
vant, but dispositive of the section 135(b)(1) question.” Id.
at 1374. Adair’s arguments in this case are similar to
California’s arguments in Regents, where the court held
that there is no requirement that the Board reference the
issued patent claim(s) in the count to assess the material
differences between the post- and pre-critical date claims.
Id. at 1374-76.
The statement in Regents that the applicant’s earlier
filed claims must “provide pre-critical date support for the
post-critical date identity between [the post-critical date
claim] and the [issued patent]” to avoid the § 135(b)(1)
bar, 455 F.3d at 1375 (emphasis added), does not require
the Board to assess material differences in view of the
issued patent claim(s) in the count. See Berger, 279 F.3d
at 982. The question of material differences between
post- and pre-critical date claims for purposes of overcom-
ing a § 135(b) bar “is a distinctly different question from
whether claims . . . are directed to the same or substan-
tially the same subject matter” for purposes of provoking
an interference. Id. As explained in Regents, § 135(b) is a
statute of repose, intended to “limit[] the patentee’s
vulnerability to a declaration of an interference” by
“limit[ing] the window of time in which the cause of the
interference can occur.” 455 F.3d at 1376. When a mate-
rial difference exists between the post- and pre-critical
10 ADAIR v. CARTER
date claims, a belated interference is improper because it
would be a “different interference[]” than that which
“should have been earlier declared by the PTO.” Id.
(emphasis added).
For these reasons, this court holds that to overcome a
§ 135(b) bar for a post-critical date claim, an applicant
must show that such claim is not materially different
from a pre-critical date claim present in the application or
any predecessor thereto in order to obtain the benefit of
the earlier filing date. Any claims filed within the critical
period, whether or not later cancelled, may provide pre-
critical date support for the later filed patent claim(s), so
long as the pre-critical date claims are not materially
different from the later filed claim(s). Corbett, 568 F.2d at
765-66; see also Regents, 455 F.3d at 1373; Berger, 279
F.3d at 981-82.
Here, the Board found material differences between
post-critical date claim 24 of the ’261 Application and pre-
critical date claims 1 and 16 of the PCT Application based
on the prosecution history of the ’261 Application. During
prosecution, Adair added several limitations to claim 24—
limitations not present in claims 1 and 16 of the PCT
Application—to avoid examiner rejections during prosecu-
tion. Decision at 9. Adair failed to rebut the Board’s
finding with any evidence that the differences between
claim 24 and claims 1 and 16 of the PCT Application were
immaterial. Id. at 10. Adair criticizes the Board for
failing to consider claim 66 from Carter’s ’213 Patent in
assessing material differences. But, for the reasons
explained above, an assessment of claim 66 was not
necessary. What was required in determining whether
the § 135(b) bar might be overcome was an assessment of
the material differences between the post- and pre-critical
date claims, which is precisely what the Board did.
ADAIR v. CARTER 11
ii.
Adair also contends that the Board erred in applying
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
U.S. 722, 734 (2002) in the context of an interference to
conclude that a limitation added to a claim in response to
a rejection that results in allowance is presumed to be
necessary to patentability and therefore “material.” Adair
asserts that the burden of proof for the § 135(b) motion
lay with Carter, and thus Adair cannot be faulted “for not
providing any reason why the limitations that differ . . .
were not material.” Appellant Br. 25. Carter counters
that “the Board’s presumption of material differences is
firmly grounded in the law.” Appellee Br. 44. See Parks
v. Fine, 773 F.2d 1577, 1579 (Fed. Cir. 1985); Corbett, 568
F.2d at 765.
Carter is correct. When an applicant adds limitations
in response to an examiner’s rejection, and those limita-
tions result in allowance, there exists a well established
presumption that those limitations are necessary to
patentability and thus material. See Festo, 535 U.S. at
734; Corbett, 568 F.2d at 765. This presumption applies
with equal force in the interference context. Parks, 773
F.2d at 1579 (holding in an interference case that “[t]he
insertion of [a] limitation to overcome the examiner’s
rejection is strong, if not conclusive, evidence of material-
ity” (emphasis added)). Here, because Adair cancelled
claims 1 and 16 of the PCT Application in response to the
examiner’s rejections, and added limitations into what
eventually became claim 24 of the ’261 Application to
secure allowance, the Board properly presumed material
differences between Adair’s post- and pre-critical date
claims. Adair failed to rebut this presumption.
12 ADAIR v. CARTER
iii.
Adair argues that the Board erred by establishing an
absolute requirement that the pre-critical date claims be
patentable to the applicant for the applicant to rely on
those claims to avoid the § 135(b) bar. Carter counters
that the Board did not articulate such a requirement, but
even if it did, the requirement is appropriate. The Board
quoted language from Regents, where this court stated
that it “perceives no inequity in a construction of section
135(b)(1) that might, in some circumstances, prevent a
patent applicant from relying on the filing date of a claim
to which it was not statutorily entitled.” Regents, 455
F.3d at 1377.
The court in Regents did not articulate a per se pat-
entability requirement for an applicant to rely on pre-
critical date claims, but rather observed that where
material limitations are added to overcome an examiner’s
rejection after the critical date, there is “no inequity” in
finding the later added claims barred under § 135(b)(1).
Adair is correct that cancelled claims may be relied upon
to avoid the § 135(b) bar. See Corbett, 568 F.2d at 765
(“The words ‘prior to’ in the present code clearly point to a
‘critical date’ prior to which . . . the copier had to be claim-
ing the invention, whether or not the claims were subse-
quently cancelled.”). Adair is incorrect, however, in
contending that the Board established any absolute
requirement that the pre-critical date claims must have
been patentable to Adair. Even if it did, the error would
have been harmless because the Board found material
differences between the post- and pre-critical date claims,
which Adair failed to rebut.
ADAIR v. CARTER 13
iv.
Finally, Adair argues that the Board abused its dis-
cretion in failing to consider claim 2 of the PCT Applica-
tion as pre-critical date support for claim 24. The Board
did not abuse its discretion in declining to consider claim
2 of the PCT Application for the first time on rehearing.
37 C.F.R. § 41.125(c), governing rehearing before the
Board, provides that “[t]he burden of showing a decision
should be modified lies with the party attacking the
decision [and t]he request must specifically identify . . .
(ii) The place where the matter was previously addressed
in a motion, opposition, or reply.” 37 C.F.R. § 41.125(c)(3)
(emphasis added). Because Adair failed to previously
address claim 2 prior to its petition for rehearing, the
Board properly refused to consider it on rehearing.
III. CONCLUSION
For the foregoing reasons, this court affirms the deci-
sion of the Board.
AFFIRMED