In a recent Report and Recommendation, Magistrate Judge Christopher J. Burke recommended that the court grant defendant’s (“Gilead”) motion to dismiss for lack of subject matter jurisdiction. Idenix Pharmaceuticals LLC, et al. v. Gilead Pharmasset LLC, C.A. No. 15-416-LPS-CJB (D. Del. Jul. 5, 2016). Plaintiffs (“Idenix”) filed this action pursuant to 35 U.S.C. § 146, seeking review of certain decisions of the United States Patent and Trademark Office (“PTO”) in Interference No. 105,981 (the “’981 Interference”), which involved Idenix’s U.S. Patent No. 7,608,600 (the “’600 patent”) and Gilead’s U.S. Patent Application Serial No. 11/845,218. Id. at 1-2.
Judge Burke recommended that the Court dismiss Idenix’s complaint in view of the Federal Circuit’s decision in Biogen MA, Inc. v. Japanese Cancer Research, 785 F.3d 648 (Fed. Cir. 2015). Id. at 2, 4. Biogen, which issued a few weeks before Idenix filed its complaint, found that “the [Leahy-Smith America Invents Act] eliminated district courts’ subject matter jurisdiction under pre-AIA [Section] 146 to review decisions in interference proceedings declared after September 15, 2012.” Id. at 2. According to Biogen, “parties seeking review of a decision in an interference proceeding declared after September 15, 2012 must file an appeal with the Federal Circuit pursuant to 35 U.S.C. § 141.” Id. In addition, after Idenix filed its complaint, the Federal Circuit denied en banc review of the Biogen decision, and the Supreme Court denied Biogen MA, Inc.’ s petition for a writ of certiorari. Id. at 4.
The ‘981 Interference was declared after September 15, 2012, and Judge Burke thus found that the court lacked subject matter jurisdiction to review the Interference. Id. at 4. In addition, Judge Burke denied Idenix’s alternative request that the court transfer this action to the Federal Circuit (rather than dismiss it), and only transfer the action after the court resolved a related action, which involved review of a related interference over which the court had subject matter jurisdiction. Id. at 3-6. Denying this alternative request, Judge Burke explained that “Idenix has already brought a separate appeal in the Federal Circuit from the same PTO decision” regarding the ‘981 Interference. Id. at 5. Agreeing with Gilead, Judge Burke noted that “there [was] no reason to send the Federal Circuit a second appeal challenging the exact same decision.” Id. at 5. Judge Burke additionally found that waiting to transfer “would appear to run counter to the wishes of the Federal Circuit,” which had already denied Idenix’s motion to stay the related appeal. Id. at 5-6.