Shu-Hui Chen and Vittorio Farina v. Herve Bouchard, Jean-Dominique Bourzat, and Alain Commercon

347 F.3d 1299, 68 U.S.P.Q. 2d (BNA) 1705, 2003 U.S. App. LEXIS 21440, 2003 WL 22401352
CourtCourt of Appeals for the Federal Circuit
DecidedOctober 22, 2003
Docket03-1037
StatusPublished
Cited by44 cases

This text of 347 F.3d 1299 (Shu-Hui Chen and Vittorio Farina v. Herve Bouchard, Jean-Dominique Bourzat, and Alain Commercon) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Shu-Hui Chen and Vittorio Farina v. Herve Bouchard, Jean-Dominique Bourzat, and Alain Commercon, 347 F.3d 1299, 68 U.S.P.Q. 2d (BNA) 1705, 2003 U.S. App. LEXIS 21440, 2003 WL 22401352 (Fed. Cir. 2003).

Opinions

Opinion for the court filed by Circuit Judge LOURIE. Opinion dissenting in part filed by Circuit Judge PAULINE NEWMAN.

LOURIE, Circuit Judge.

Shu-Hui Chen and Vittorio Farina (collectively “Chen”) appeal from the decision of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences awarding judgment to appellees Hervé Bouchard, Jean-Dominique Bourzat, and Alain Commergon [1301]*1301(collectively “Bouchard”), the senior party, in Interference No. 108,675. Chen v. Bouchard, Inter. No. 108,675, Paper No. 336 (Bd. Pat.App. & Interfs. Aug. 2, 2002). Because the Board’s decision was supported by substantial evidence and not contrary to law, and its evidentiary rulings do not reflect an abuse of discretion, we affirm.

BACKGROUND

On October 24, 1995, the PTO declared the present interference between Chen’s U.S. Patent 5,254,580, assigned to Bristol-Myers Squibb Company, and Bouchard’s application U.S.S.N. 08/162,984, assigned to Rhóne-Poulenc Rorer S.A. Id., slip op. at 1-2. The Chen patent issued from application U.S.S.N. 08/029,819, filed March 11, 1993, which was a continuation-in-part of application U.S.S.N. 08/006,423, filed January 19, 1993, which was in turn a continuation of application U.S.S.N. 07/907,261, filed July 1, 1992. The Bou-chard application was filed December 8, 1993, and was accorded the benefit of the filing date of Bouchard’s French application (No. 92 14813), filed December 9, 1992.

Chen’s '261 application, entitled “Fluoro Taxols,” was directed entirely to taxol derivatives and derivatives of baccatin III (a precursor of taxol) having fluorine in place of taxol’s 7-hydroxy group, and described methods purportedly useful for the synthesis of those derivatives by fluorinating taxol derivatives with (diethylamino)sulfur trifluoride (“DAST”). Id. at 13-18. The application’s claims were directed to those derivatives, pharmaceutical formulations containing them, and methods of using them to treat tumors. Id. at 18. The PTO allowed all of the claims in the '261 application in August 1992, just a month after the application was filed, and Chen paid the issue fee in November of that year. Id.

On January 19, 1993, Chen filed a petition to withdraw the '261 application from issuance, stating that it had been discovered that the methods described in that application did not produce mixtures of 7a. and 7(3-fluorotaxols, as had previously been believed, but instead produced mixtures of 7a-fluorotaxols and 7,8-cyclopropataxols (i.e., taxol derivatives in which taxol’s 8-methyl group’s carbon has displaced its 7-hydroxy group to form a fused three-membered ring). Id. at 18-19. Along with the petition to withdraw, Chen filed the '423 continuation application, pursuant to then-existing 37 C.F.R. § 1.60,1 together with a preliminary amendment that cancelled all the original claims in the continuation application and added claims directed to cyclopropataxol and eyclopro-pabaccatin III derivatives. Id. at 19-20. Chen later filed another preliminary amendment to replace the a-fluorotaxols in the '423 application’s drawings with drawings reflecting the cyclopropataxol structures. Id. at 20. A short time later, Chen filed the '819 CIP application, entitled “7,8-Cyclopropataxanes,” claiming priority from both the '261 and the '423 applications and including a revised specification and claims to 7,8-cyclopropataxols, pharmaceutical formulations containing the same, a treatment method, and 7,8-cyclo-propabaccatin III derivatives. Id. at 22.

The PTO thereafter rejected all of the new claims in the '423 continuation application under 35 U.S.C. § 112, ¶¶ 1 and 2, objected to the designation of that application as a “continuation,” and objected to the second preliminary amendment under 35 U.S.C. § 132 as containing new matter. Id. at 21. Chen subsequently cancelled [1302]*1302the claims in that application directed to the cyclopropataxol derivatives and intermediates useful for their synthesis, resulting in almost immediate allowance of the remaining claims, but later abandoned the application in favor of the '819 CIP application. Id. The claims of the '819 application were also quickly allowed by the PTO, and the Chen patent issued from it on October 19,1998. Id. at 22.

Like Chen’s '819 CIP application, both the Bouchard application at issue in this interference and Bouchard’s French priority application are directed to 7,8-eyclopro-pataxols.

There are three counts presently in this interference: 2, 3A, and 4. Count 2 corresponds to Chen’s claims 7-9 and Bou-chard’s claim 142; Count 3A corresponds to Chen’s claims 10-11 and Bouchard’s claim 141; and Count 4 corresponds to Chen’s claims 1-6 and 8-9 and Bouchard’s claim 140. Id. at 6-7. Each of the three counts is written in the alternative, or “bifurcated,” form. They read as follows:

Count 2
4a-10p-diacetoxy-2o-benzoyloxy-5p, 20-epoxyp-hydroxy-7p,8p-methylene-9-oxo-19-nor-ll-taxenl3a-yl(2R,3S)-3-tert-butoxycarbonyl-amino-2-hydroxy-3-phenylpropionate
OR
N-debenzoyl-N-t-butoxycarbonyl-7-deoxy-8-desmethyl-7,8-cyclopropataxol.
Count 3A
A taxoid of the formula:
[[Image here]]
in which G1 represents hydrogen or acetyl,
OR
A compound of the formula:
[[Image here]]
[1303]*1303in which R13 is hydrogen, acetyloxy or hydroxy; R14 is hydrogen; or R13 and R14 jointly form a carbonyl group.
Count 4.
A taxoid of the formula:
[[Image here]]
in which
R represents hydrogen or acetyl,
Rx represents benzoyl or R2-0-C0in which R2 represents t-butyl, and
Ar represents phenyl or a- or (3-na-phthyl, said phenyl or naphthyl being unsubstituted or substituted by C,_4 al-kyl, Cj^-alkoxy, halogen, or CF3, or Ar represents 2- or 3-thienyl or 2- or 3-furyl, said thienyl or furyl being unsubstituted or substituted by halogen,
OR
A compound of the formula[:]
[[Image here]]
in which
R1 is -COR2 in which R2 is t-butyloxy, Cw alkyl, C2_e alkenyl, alkynyl, C3_6 cycloalkyl or phenyl, optionally substituted -with one to three same or different Ci_g alkyl, alkoxy, halogen or -CF3 groups;

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347 F.3d 1299, 68 U.S.P.Q. 2d (BNA) 1705, 2003 U.S. App. LEXIS 21440, 2003 WL 22401352, Counsel Stack Legal Research, https://law.counselstack.com/opinion/shu-hui-chen-and-vittorio-farina-v-herve-bouchard-jean-dominique-bourzat-cafc-2003.