Case of the Day: Bd. of Trs. of the Leland Stanford Junior Univ. v. Chinese Univ. of Hong Kong, 2017 U.S. App. LEXIS 11382 (Fed. Cir. June 27, 2017)

Summary:

A Stanford professor and a Chinese University professor separately developed a new method for diagnosing fetal conditions involving abnormal number of chromosomes (such as Down's Syndrome.) The Stanford professor filed patent first, then the CUHK professor filed later. Then the Stanford professor claimed that his earlier patent included the concept included the patent that the CUHK professor filed. The Patent Trial and Appeal Board ruled in favor of the CUHK professor. The case was initially appealed to the U.S. District Court for the Northern District of California, in which parties conducted extensive discovery. But pursuant to the intervening of case of Biogen MA, Inc. v. Japanese Found. for Cancer Research, 785 F.3d 648 (Fed. Cir. 2015), the case was transferred to the Federal Circuit.

The Federal Circuit first held that Biogen was correctly decided, and the discovery material cannot be used for consideration because, pursuant to Biogen, the District Court never had subject matter jurisdiction. Reviewing the PTAB decision de novo, the court vacated and remanded, finding that the PTAB failed to specifically explain its decision.

Takeaway:

The civil procedure of the Federal Circuit is always fascinating. One implication of this case is that, in a situation similar to this one, the parties may never have the chance to conduct extensive discovery, since they are skipping the District Court entirely.