BAYER CROPSCIENCE NV et al.

Patent Trials and Appeals Board

Sep 30, 2020

90013452 - (D) (P.T.A.B. Sep. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,452 02/17/2015 5561236 2428-0157L 3533
2292 7590 09/30/2020
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
CAMPELL, BRUCE R
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/30/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BAYER CROPSCIENCE NV and BIOGEN IDEC MA, INC.
Patent Owners and Appellants
____________

Appeal 2020-002903
Reexamination Control 90/013,452
Patent 5,561,236
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, RAE LYNN P. GUEST, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
This appeal stems from a third-party request filed February 17, 2015,
for ex parte reexamination of U.S. patent 5,561,236 (“the Leemans ’236
patent”).1 Bayer CropScience NV and Biogen Idec MA, Inc. (“Patent
Owners”), the owners of the Leemans ’236 patent, appeal2 the Examiner’s
final rejection of claims 8, 9, 12, 15, 18, and 19.3 We have jurisdiction over
the appeal under 35 U.S.C. §§ 134(b) and 306.
We REVERSE.4

1 The first-named inventor of U.S. patent 5,561,236 is Jan Leemans.
2 Appeal Brief filed November 1, 2017 (“Appeal Br.”).
3 Final Office Action entered March 17, 2017 (“Final Act.”).
4 We heard oral arguments from Patent Owners’ representative on June 23,
2020.
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CLAIMED SUBJECT MATTER
The invention described in the ’236 patent relates to a process for
protecting plant cells and plants from the herbicidal action of glutamine
synthetase inhibitors. Col. 1, ll. 12–17. Claims 1, 2, and 5 of the ‘236
patent, among others, were previously held invalid for lack of enablement.
Plant Genetic Systems, N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1344
(Fed. Cir. 2003) (affirming the district court of Connecticut’s holding that
claims 1–5, 10, and 11 of the ‘236 patent are invalid due to lack of an
enabling disclosure in the Specification of the ‘236 patent). The claims of
the ‘236 patent subject to the present appeal, claims 8, 9, 12, 15, 18, and 19,
each depend from either claim 1, 2, or 5, and are reproduced in the Claims
Appendix of the Appeal Brief. Appeal Br. 4, Claims App.
THE REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered August 28, 2018 (“Ans.”):
I. Claims 8, 9, 12, 15, 18, and 19 for nonstatutory, obviousness-
type double patenting over claim 7 of U.S. patent 5,273,894 (“the Strauch
’894 patent”) in view of Bevan, Binary Agrobacterium Vectors for Plant
Transformation, 12 Nucleic Acids Research 8711 (1984); and
II. Claims 8, 9, 12, 15, 18, and 19 for nonstatutory, obviousness-
type double patenting over claims 6–11 of U.S. patent 5,276,268 (“the
Strauch ’268 patent”) in view of Bevan.
We collectively refer to the Strauch ’894 patent and the Strauch ’268
patent as “the Strauch patents” throughout the remainder of this Decision.

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DISCUSSION
We review appealed rejections for reversible error based on the
arguments and evidence the Patent Owners provide for each issue the Patent
Owners identify. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner
had failed to make a prima facie case, “it has long been the Board’s practice
to require an applicant to identify the alleged error in the examiner’s
rejections”)).
Upon consideration of the evidence relied upon in this appeal and
each of Patent Owners’ contentions, we reverse the Examiner’s rejections of
claims 8, 9, 12, 15, 18, and 19 for obviousness-type double patenting, for
reasons set forth in the Appeal and Reply Briefs,5 and discussed below.
The application that issued as the Leemans ’236 patent (application
07/525,300, filed May 17, 1990) is a continuation of application 07/131,140,
filed November 5, 1987.6 The Leemans ’236 patent issued on October 1,
1996, and expired on October 1, 2013. 35 U.S.C. § 154(c)(1).

5 Patent Owners filed a Reply Brief on November 28, 2018 concurrently
with a petition requesting entry of a Declaration of Jan Van Rompaey dated
November 26, 2018. The Patent Office entered a Decision granting the
petition on December 10, 2018. The Examiner entered a Supplemental
Examiner’s Answer on December 2, 2019 (“Supp. Ans.”) in which the
Examiner confirmed entry of the Van Rompaey Declaration, and Patent
Owners filed a second Reply Brief on May 8, 2020 in response to the
Supplemental Examiner’s Answer.
6 Application 07/131,140 is a continuation of application PCT/EP87/00141,
filed March 11, 1987. It is unclear on the record before us if the Leemans
’236 patent is entitled to the benefit of the filing date of application
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The application that issued as the Strauch ’894 patent (application
07/795,275, filed November 20, 1991) is a continuation of application
07/605,131, filed October 31, 1990, which is a continuation of application
07/088,118, filed August 21, 1987. The Strauch ’894 patent issued on
December 28, 1993, and expired on December 28, 2010.
The application that issued as the Strauch ’268 patent (application
07/736,316, filed July 29, 1991) is a continuation-in-part of application
07/501,314, filed March 26, 1990, which is a continuation of application
07/145,302, filed January 19, 1988 and a continuation of application
07/605,131, filed October 31, 1990, which is a continuation of application
07/088,118, filed August 21, 1987. The Strauch ’268 patent issued on
January 4, 1994, and expired on January 4, 2011.
The earliest effective U.S. filing date of the Leemans ’236 patent thus
appears to be November 5, 1987, which is later than the apparent earliest
effective U.S. filing date of the Strauch ’894 patent (August 21, 1987), but
the Strauch ’894 patent issued before the Leemans ’236 patent, and expired
several years (December 28, 2010) before the expiration date of the
Leemans ’236 patent (October 1, 2013).
Similarly, the earliest effective U.S. filing date of the Leemans ’236
patent (November 5, 1987) is later than the earliest effective U.S. filing date
of the Strauch ’268 patent (August 21, 1987), but the Strauch ’268 patent
issued before the Leemans ’236 patent, and expired several years (January 4,

PCT/EP87/00141 for purposes of determining the earliest effective U.S.
filing date of the Leemans ’236 patent. See MPEP § 804(I)(B)(1)(a).
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2011) before the expiration date of the Leemans ’236 patent (October 1,
2013).
Patent Owners indicate (Appeal Br. Ex. 6; see also Appeal Br. 8), and
the Examiner confirms (Final Act. 5), that the application leading to the
Leemans ’236 patent was jointly assigned from the inventors to Plant
Genetic Systems NV and Biogen NV. Plant Genetic Systems NV
subsequently changed its name to Aventis CropScience NV, which changed
its name to Bayer CropScience NV, which changed its name to Bayer
BioScience NV, which changed its name to Bayer CropScience NV. Biogen
NV changed its name to Biogen Inc., which changed its name to Biogen Idec
MA Inc. It is undisputed on the record before us, therefore, that the
Leemans ’236 patent is currently assigned to both Bayer CropScience NV
and Biogen Idec MA Inc. Compare Final Act. 5, with Appeal Br. 8.
Patent Owners also indicate (Appeal Br. Ex. 6; see also Appeal Br. 8),
and the Examiner generally confirms (Final Act. 5), that the applications
leading to the Strauch patents were assigned from the inventors to Hoechst
AG, which changed its name to Hoechst Schering AgrEvo GmbH, which
changed its name to Aventis CropScience GmbH, which changed its name to
Bayer CropScience GmbH, which changed its name to Bayer CropScience
AG. It is undisputed on the record before us, therefore, that the Strauch
patents are currently assigned to Bayer CropScience AG. Compare Final
Act. 4–5, with Appeal Br. 8.
Patent Owners acknowledge that the subject matter claimed in the
Strauch patents and Leemans ’236 patent is “overlapping,” and Patent
Owners implicitly acknowledge that the claims of the Strauch patents cover
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species of the genus claimed in the Leemans ’236 patent. Appeal Br. 27–28;
see also Declaration of Ted M. Sichelman filed May 19, 2017, ¶¶ 80, 81
(Appeal Br. Ex. 11).
Patent Owners and the Examiner agree that the Leemans ’236 patent
and the Strauch patents do not have any inventors in common. Compare
Final Act. 7, with Appeal Br. 7. The Examiner determines, however, that
because the Leemans ’236 patent is currently owned by Bayer CropScience
NV and Biogen Idec MA, Inc., and the Strauch patents are currently owned
by Bayer CropScience AG, and because Bayer CropScience NV and Bayer
CropScience AG are wholly-owned subsidiaries of Bayer AG, Bayer AG is
a “common owner/assignee” of the Leemans ’236 and Strauch patents.
Final Act. 5–7, 13. The Examiner determines that this common ownership
provides a basis for obviousness-type double patenting under MPEP § 804,
which states that “[b]efore consideration can be given to the issue of double
patenting, two or more patents or applications must have at least one
common inventor and/or be either commonly assigned/owned or non-
commonly assigned/owned but subject to a joint research agreement.” Final
Act. 7.
The Examiner also determines that “[t]he sections of the MPEP
discussing double patenting rejections also make it clear that ‘common’ does
not mean ‘identical,’” because, for example, “MPEP 804(I)(A) states that
double patenting may occur where two patents/applications were filed by
‘the same inventive entity, or by a different inventive entity having a
common inventor, and/or by a common assignee/owner.’” Final Act. 7
(emphasis omitted). And, the Examiner determines, “MPEP 2127(IV)
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explains that ‘if an application that has not been published has an assignee or
inventor in common with the application being examined, a rejection will be
proper in some circumstances. For instance, when the claims between the
two applications are not independent or distinct, a provisional double
patenting rejection is made.’” Id.
The Examiner also determines that the “appropriateness of imposing a
double patenting rejection based on Bayer’s common ownership” of the
Leemans ‘236 and Strauch patents “is further supported by public policy.”
Final Act. 8 (citing In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013).
According to the Examiner, Bayer’s “common ownership” of the Leemans
’236 and Strauch patents results “in an unjustified time-wise extension of
Bayer’s right to exclude others from practicing the invention” because “any
accused infringer of the claims of either Strauch patent could still be
subjected to the later issued claims in the Leemans ‘236 patent even after
expiration of the Strauch patent.” Final Act. 8–9. The Examiner determines
that, in addition, “there is a significant risk of ‘harassment by multiple
assignees’ due to the common but not identical ownership of the [Leemans
’236 and Strauch] patents.” Final Act. 9.
Patent Owners argue that “two separate and independent bases” exist
for reversing the Examiner’s obviousness-type double patenting rejection.
Appeal Br. 4. First, Patent Owners argue that the Leemans ’236 patent and
the Strauch patents are not “commonly owned” because ownership of the
patents is not identical due to the fact that Biogen Idec MA, Inc. “has always
been, and continues to be, a co-owner of the Leemans [’236] patent, and at
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the same time does not have, and never has had, any patent ownership rights
in the cited Strauch patents.” Id. (emphasis omitted).
Second, Patent Owners argue that the Leemans ’236 and the Strauch
patents are not “commonly owned” because “there is not, and never has
been,” any overlap in ownership between Leemans ’236 patent, which is co-
owned by Bayer CropScience NV and Biogen Idec MA, Inc., and the
Strauch patents, which are both owned by Bayer CropScience AG. Id.
Patent Owners argue that Bayer CropScience NV and Bayer CropScience
AG “are two separate and independent companies.” Id.
More specifically, as to Patent Owners’ first argument that identity of
ownership is required for patents to be “commonly owned” in the context of
obviousness-type double patenting, Patent Owners argue that although the
portion of MPEP § 804 quoted by the Examiner does not define “commonly
owned,” MPEP § 706.02(l)(2)(1) does define the term, stating that “[t]he
term ‘commonly owned’ is intended to mean that the subject matter which
would otherwise be prior art to the claimed invention and the claimed
invention are entirely or wholly owned by the same person(s) or
organization(s) business entity(ies).” Appeal Br. 8. Patent Owners argue
that this section of the MPEP goes on to provide a hypothetical example to
illustrate the meaning of “commonly owned”: if Company A owns twenty
percent of Application X and Company B owns eighty percent of
Application X, then patent Z is not commonly owned with Application X
unless both Company A and Company B own patent Z. MPEP
§ 706.02(1)(2)(1) (second paragraph). Appeal Br. 8–9. In the present case,
Patent Owners argue, “Biogen has an ownership interest in the Leemans
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patents but Biogen has nothing to do with the Strauch patents. Thus,
according to the hypothetical in the MPEP, the Leemans and Strauch patents
are not commonly owned.” Appeal Br. 9 (emphasis omitted).
The Examiner responds to this argument by taking the position that
MPEP § 706.02(l)(2)(1) “pertains to how prior art may be disqualified under
pre-AIA 35 U.S.C. § 103, and is not pertinent to double patenting
rejections.” Ans. 13.
Patent Owners argue, however, that contrary to the Examiner’s
assertion, MPEP § 1490(VI)(A) links the definition of “commonly owned”
set forth in MPEP § 706.02(l)(2)(1) to double patenting by stating that: “A
terminal disclaimer filed to obviate a non-statutory double patenting
rejection based on a commonly owned patent or application must comply
with the requirements of 37 CFR 1.321(c). The terminal disclaimer must
state that any patent granted on the application being examined will be
enforceable only for and during the period that it and the patent to which the
disclaimer is directed or the patent granted on the application to which the
disclaimer is directed are commonly owned. See MPEP § 706.02(1)(2) for
examples of common ownership, or lack thereof.” Appeal Br. 9 (emphasis
added).
Patent Owners argue that, therefore, “the USPTO’s own published
guidance in the MPEP defines the term ‘commonly owned’ to mean
identical ownership, and directly links that definition in one section of the
MPEP to apply to the MPEP section on double patenting.” Appeal Br. 9.
Patent Owners further argue that a decision by the Board of Patent
Appeals and Interferences in Ex parte Brookhart supports this position.
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Appeal Br. 10; Ex parte Brookhart, Appeal No. 2005-2463 (BPAI Sept. 19,
2005) (Appeal Br. Ex. 9). The patent application at issue in Brookhart was
“co-owned by both University of North Carolina and DuPont,” while the
reference “Bennett patent [was] assigned solely to DuPont.” Brookhart 4.
The “fundamental” issue before the Board was whether the Brookhart
application and the Bennett patent were “currently ‘commonly owned’ for
purposes of applying an obviousness-type double patenting rejection.”
Brookhart 4–5. The Board determined that “MPEP § 1490, which relates to
the filing of a terminal disclaimer for the purpose of obviating a double
patenting rejection of the obviousness type, explicity [sic] links the meaning
of common ownership in a double patenting context to the definition in
MPEP § 706.02(1)(2),” which, the Board indicated, “is dispositive of the
issue before us.” Brookhart 6. The Board concluded that “the double
patenting rejection at issue is inappropriate because the Bennett patent and
[Patent Owners’] application are not ‘commonly owned’ as defined in
MPEP § 706.02(l)(2).” Id.
Patent Owners argue that “Brookhart was correctly decided and the
reasoning of the Board in that case should be followed here.” Appeal Br. 11.
Patent Owners further argue that Brookhart is consistent with the District
Court of Delaware’s decision in Novartis Pharms. Corp. v. Noven Pharms.
Inc., 125 F. Supp. 3d 474 (D. Del., Aug. 31, 2015) (Appeal Br. Ex. 10).
Appeal Br. 11. In Novartis, an accused infringer (Noven) argued that the
asserted claims of the patent at issue (the ’031 patent) were invalid for
obviousness-type double patenting over claims of an issued patent (the ’176
patent). Novartis, 125 F. Supp. 3d at 476. Although the patent at issue (the
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’031 patent) and the reference patent (the ’176 patent) had no inventors in
common, the patent at issue (the ’031 patent) was jointly owned by Novartis
AG and LTS, while the reference patent (the ’176 patent) was solely owned
by Novartis AG. Novartis, 125 F. Supp. 3d at 486–87. Accused infringer
Noven argued that both patents were “commonly owned” for the purposes of
obviousness-type double patenting because they shared Novartis AG as a
common assignee. Id. The court, however, held that the patent at issue (the
’031 patent) was not commonly owned with the reference patent (the ’176
patent). Id. The court based its decision on the definition in MPEP
§ 706.02(l) of “common ownership” as “entirely or wholly owned by the
same person(s) or organization(s).” Id. The court explained that
“obviousness-type double patenting fails as a matter of law because the ‘176
patent and ‘031 patent were not filed by the same inventive entity, have no
inventors in common, and are not entirely owned by the same entity.”
Novartis, 125 F. Supp. 3d at 487 (citing Hubbell, 709 F.3d at 1146–48).
The Examiner does not respond to Patent Owners’ arguments directed
to the Novartis decision. See generally Ans. The Examiner, however, does
indicate that “[a]s a non-precedential decision, Brookhart is not binding
precedent on the Office.” Ans. 14. The Examiner further indicates that
“[a]ny persuasive value Brookhart might have is undercut by its
contradiction of the controlling precedent such as seen in In re Dinwiddie,
347 F.2d 1016 (CCPA 1965).” Id.
We do not agree with the Examiner, however, that Dinwiddie is
“controlling precedent.” In Dinwiddie, the rejection at issue was a “double
patenting rejection . . . in the ‘common assignee’ category by tacit agreement
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of the parties.” Dinwiddie, 347 F.2d at 1017. The court “assume[d]
common ownership” of the application at issue and a reference patent
applied in the double patenting rejection because “the case seems to have
proceeded on this assumption and no one disputes it.” Id. The court
indicated, however, that common ownership “is not substantiated by the
record and may not in fact exist.” Id. Contrary to the Examiner’s assertion,
Dinwiddie, therefore, does not control in the present case because the court
assumed that the application at issue and the reference patent were
commonly owned for the purpose of reviewing and analyzing a double
patenting rejection, rather than initially determining on the merits whether
such common ownership actually existed.
Nonetheless, for disposition of the present appeal, we need not decide
whether “commonly owned” in the context of obviousness-type double
patenting requires identity of ownership as Patent Owners argue, or does not
require identity of ownership as the Examiner asserts. For reasons discussed
below, Patent Owners’ second argument asserting lack of overlap in
ownership between the Leemans ’236 patent and the Strauch patents
identifies reversible error in the Examiner’s rejection.
As discussed above, Patent Owners argue that Bayer CropScience
NV, a co-owner (with Biogen Idec MA Inc.) of the Leemans ’236 patent,
and Bayer CropScience AG, the sole owner of the Strauch patents, “are two
separate and independent companies,” and, therefore, no overlap in
ownership exists between the Leemans ’236 and Strauch patents. Appeal
Br. 4. Elaborating on this argument, Patent Owners contend that, as a matter
of law, contrary to the Examiner’s position (discussed above), although
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Bayer AG owns 100% of the shares of its subsidiaries Bayer CropScience
NV and Bayer CropScience AG, Bayer AG does not own the assets—
including the patents—of either company. Appeal Br. 20–21.
Patent Owners argue that under Akazawa v. Link New Tech.
International Inc., 520 F.3d 1354, 1357–58 (Fed. Cir. 2008) (Appeal Br. Ex.
13) the controlling law for determining patent ownership is governed by the
“law of the location of the owner/assignee.” Appeal Br. 20. Patent Owners
argue that, therefore, because Bayer CropScience AG “is a German
company, organized under German law,” ownership of patents assigned to
Bayer CropScience AG is “governed by German law.” Id. Patent Owners
argue that, as explained in the Declaration of Hans Christoph Grigoleit
(Appeal Br. Ex. 14), “[u]nder German law, a subsidiary stock corporation
(‘AG’) still owns the assets (including patents) owned by it, even if 100%
owned by a parent corporation.” Appeal Br. 21; Grigoleit Declaration ¶ 7
(“As long as an AG retains its status as an AG . . . its assets will be allocated
to the AG itself, whatever the structure of the corporate affiliation may be
like. Even a subsidiary AG whose parent corporation owns 100 % of its
stock is recognized as a separate legal person in terms of German corporate
law. The parent corporation does not share ownership of the subsidiary’s
assets based on it owning 100% of the shares.”). Patent Owners argue that,
therefore, Bayer CropScience AG, rather than Bayer AG, owns the patents
assigned to Bayer CropScience AG, including the Strauch patents. Appeal
Br. 20.
Similarly, Patent Owners argue that under Akazawa, because Bayer
CropScience NV “is a Belgian company,” ownership of patents assigned to
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Bayer CropScience NV is “governed by Belgian law.” Appeal Br. 21.
Patent Owners argue that, as explained in the Declaration of Hans De Wulf
(Appeal Br. Ex. 15), under Belgian law, “patents or other assets owned by an
NV are owned by the legal person that is the corporation, not by the
shareholders of that corporation.” Appeal Br. 21 (citing De Wulf
Declaration § 1, ¶ 2). Patent Owners argue that, therefore, under Belgian
law, Bayer CropScience NV, rather than Bayer AG, owns the patents
assigned to Bayer CropScience NV, including the Leemans ’236 patent.
Appeal Br. 21.
Patent Owners argue that although U.S. law should not be applied to
determine ownership of the Leemans ’236 and Strauch patents, even if U.S.
law were applied, Bayer AG would have “no ownership rights” in either
patent. Appeal Br. 23. Patent Owners rely on numerous court decisions to
support this argument, including the Supreme Court’s decision in Dole Food
Co. v. Patrickson, 538 U.S. 468, 474–75 (2003) (Appeal Br. Ex. 16), where
the Court indicated that “[a] corporate parent which owns the shares of a
subsidiary does not, for that reason alone, own or have legal title to the
assets of the subsidiary.” Appeal Br. 23.
Patent Owners also point out that in Digitech Image Techs., LLC v.
Newegg Inc., No. 2:12–c–01688, 2013 WL 1871513 (C.D. Cal. May 3,
2013) (Appeal Br. Ex.17) the Central District of California relied on the
Federal Circuit’s decision in Abraxis Bioscience, Inc. v. Navinta LLC, 625
F.3d 1359, 1366 (Fed. Cir. 2010) when holding that the “fact that a corporate
parent’s subsidiary owns a patent is not enough to establish that the parent
has a legal ownership interest in the subsidiary’s patent.” Appeal Br. 23;
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Digitech, at *4. In Abraxis, the Federal Circuit explained that “[c]ommon
corporate structure does not overcome the requirement that even between a
parent and a subsidiary, an appropriate written assignment is necessary to
transfer legal title [of a patent] from one to the other.” Abraxis, 625 F.3d at
1366.
Patent Owners further rely on the District Court of Nevada’s decision
in Email Link Corp. v. Treasure Island, LLC, No. 2:11–cv–01433–ECR–
GWF, 2012 WL 4482576 (D. Nev. Sept. 25, 2012) (Appeal Br. Ex. 18) in
which the court indicated that “Plaintiff’s argument that both the ‘176
Patent, owned by Plaintiff Email Link, and the ‘789 Patent, owned by Online
New Link, are owned by Acacia by virtue of its 100% ownership of Email
Link and Online News Link goes against a ‘basic tenet of American
corporate law . . . that the corporation and its shareholders are distinct
entities. . . . A corporate parent which owns the shares of a subsidiary does
not, for that reason alone, own or have legal title to the assets of the
subsidiary.’” Email Link at *4 (quoting Dole Food Co. v. Patrickson, 538
U.S. 468, 474–75 (2003)); Appeal Br. 23–24. The court further explained
that “in the patent context, the Federal Circuit has applied this basic
principle of American corporate law to hold that once a parent company
assigned a patent to its subsidiary, the parent no longer had rights in the
patent, even though it controlled the subsidiary.” Email Link at *4 (citing
Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1200–03
(Fed. Cir. 2005) (finding that Plaintiff lost standing to sue when it assigned
the patent at issue to its subsidiary)).
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Finally, Patent Owners argue that in Optimal Golf Solutions, Inc. v.
Altex Corp., No. 3:09–CV–1403–K, 2015 WL 93434, at *3 (N.D. Tex. Jan.
7, 2015) (Appeal Br. Ex. 19), the Northern District of Texas, citing Dole
Food, “found that a license granted to a patent owned by the licensor’s
subsidiary, not the purported licensor, was invalid because the purported
licensor did not own the patent of its subsidiary, and therefore had no right
to license it.” Appeal Br. 24; see also Optimal Golf at *3(“[m]erely because
OGSI is a wholly owned subsidiary of GPS does not in and of itself confer
all substantial rights of the ‘093 patent on GPS.”).
Patent Owners argue that, accordingly, under the above U.S. legal
authority, a “parent company does not own or have legal [title] to its
subsidiary’s patents even when the subsidiary company is incorporated in a
U.S. jurisdiction.” Appeal Br. 23 (emphasis omitted).
The Examiner responds to Patent Owners’ arguments by stating that
Patent Owners’ “choice of law argument has no merit facing the present
issue. Usually choice of law comes [into] play when a corporate entity is
held liable for the action of subsidiaries in tort or under other liability cause
of action. Here the Office is not asserting the Appellant is liable for the
activity of its subsidiaries in tort or should have standing in litigation.” Ans.
23.
A fundamental issue in the present case, however, is whether the
Leemans ’236 and Strauch patents are “commonly owned,” so as to provide
a legal basis for the Examiner’s obviousness-type double patenting rejection.
Consequently, contrary to the Examiner’s position that “choice of law . . .
has no merit facing the present issue,” identifying the correct legal standard
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for determining ownership of the Leemans ’236 and Strauch patents is
critical to the present case. By summarily dismissing Patent Owners’
“choice of law” arguments, the Examiner does not squarely address Patent
Owners’ analysis of the appropriate law to apply for determining whether
the Leemans ’236 and Strauch patents are “commonly owned.”
The Examiner further responds to Patent Owners’ arguments by
stating that the “cases [cited by Patent Owners] are not relevant to judicially
created nonstatutory double patenting. None of these cases even remotely
considered the issue of nonstatutory double patenting, and the public policy
that underlies it and that issue was never before the tribunals.” Ans. 20.
The cases cited by Patent Owners, however, are highly relevant to
determining whether the Leemans ’236 and Strauch patents are “commonly
owned.” In summarily dismissing these cases, the Examiner does not
directly address Patent Owners’ argument that under Akazawa, the
controlling legal authority for determining ownership of the Strauch patents
is German law, and the controlling legal authority for determining ownership
of the Leemans ’236 patent is Belgian law. Nor does the Examiner cite any
binding, countervailing legal authority that contradicts Akazawa, or that
contradicts the Declaration evidence provided by Patent Owners indicating
that under Belgian and German law, respectively, Bayer CropScience NV,
rather than Bayer AG, is the co-owner (with Biogen Idec MA Inc.) of the
Leemans ’236 patent, and Bayer CropScience AG, rather than Bayer AG, is
the owner of the Strauch patents.
The Examiner also responds to Patent Owners’ arguments by
contending that the court’s reasoning in Email Link “was not followed by a
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different district court.” Ans. 21–22. According to the Examiner, in Goss
International, the District Court of New Hampshire determined that “the
common ownership requirements are met when the parent company owns
100% shares of its two wholly owned subsidiaries.” Ans. 31 (citing Goss
Int’l Americas, Inc. v. MAN Roland, Inc., No. Civ. 03–CV–513–SM, 2006
WL 1360020, at *1–2 (D.N.H. May 2, 2006). The Examiner contends that,
“based on the holding in Goss, Bayer AG, by virtue of 100% ownership of
the subsidiaries, is considered a common owner of [Leemans ’236 and
Strauch] patents.” Ans. 22.
The Examiner appears to misapprehend the factual situation at issue in
Goss, however. The “question of first impression” decided by the court in
Goss was “whether a patent owned by a parent company and a patent owned
by a wholly owned subsidiary are ‘commonly owned’ for purpose of a
terminal disclaimer filed to overcome an obviousness-type double patenting
rejection.” Goss, at *1. The court in Goss, therefore, did not address
whether a parent company is considered a “common owner” of patents
assigned to two wholly-owned subsidiaries of the parent company, as the
Examiner appears to assert. Ans. 21. Contrary to the Examiner’s assertion,
the court’s holding in Goss, therefore, does not constitute either binding or
informative legal authority that supports the Examiner’s position that “Bayer
AG, by virtue of 100% ownership of the subsidiaries, is considered a
common owner of [Leemans ’236 and Strauch ] patents.” Ans. 22.
The Examiner further responds to Patent Owners’ arguments by
referring to the Supreme Court’s decision in Copperweld Corp. v. Indep.
Tube Corp., 467 U.S. 752, 771 (1984), where the Court stated that “[w]ith or
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without a formal ‘agreement,’ the subsidiary acts for the benefit of the
parent.” Ans. 19. The Examiner contends that under this reasoning, “Bayer
AG has a unity of interest with its subsidiaries and is a beneficial owner of
its subsidiaries’ patents,” and, therefore, Bayer AG “is a common owner of
the Leemans and Strauch patent for purposes of non-statutory double
patenting.” Ans. 20.
Patent Owners argue, however, that Copperweld “is totally unrelated
to ODP [obviousness-type double patenting] . . . [and] is an antitrust case,
having nothing to do with ODP in patent law.” Appeal Br. 25. Patent
Owners argue that “Copperweld also is not related to the issue of corporate
ownership of patents or any other property, which is the fundamental
underlying issue in the present case.” Appeal Br. 25.
We point out that the Court in Copperweld addressed the antitrust law
issue of whether a parent corporation and its wholly owned subsidiary were
legally capable of conspiring with each other under § 1 of the Sherman Act.
The Court determined that “the coordinated activity of a parent and its
wholly owned subsidiary must be viewed as that of a single enterprise for
purposes of § 1 of the Sherman Act.”7 Copperweld, 467 U.S. at 771
(emphasis added).

7 Section 1 of the Sherman Act provides that: “Every contract, combination
in the form of trust or otherwise, or conspiracy, in restraint of trade or
commerce among the several States, or with foreign nations, is declared to
be illegal. Every person who shall make any contract or engage in any
combination or conspiracy hereby declared to be illegal shall be deemed
guilty of a felony, and, on conviction thereof, shall be punished by fine not
exceeding $100,000,000 if a corporation, or, if any other person, $1,000,000,
or by imprisonment not exceeding 10 years, or by both said punishments, in
the discretion of the court.” 15 U.S.C. § 1.
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The Court in Copperweld did not address the legal requirements for
establishing whether two patents are “commonly owned” for purposes of
non-statutory, obviousness-type double patenting. Contrary to the
Examiner’s assertion (Ans. 19–20), the Court’s reasoning in Copperweld,
therefore, does not establish that Bayer AG “is a common owner of the
Leemans and Strauch patent for purposes of non-statutory double patenting.”
In further response to Patent Owners’ arguments, the Examiner
reiterates the position set forth in the Final Action that Bayer’s “common
ownership” of the Leemans ’236 and Strauch patents results “in an
unjustified time-wise extension of Bayer AG’s right to exclude others from
practicing the invention” and poses “a significant risk of ‘harassment by
multiple assignees.” Ans. 24–26.
Obviousness-type double patenting is grounded on the policy
justifications of “prevent[ing] unjustified timewise extension of the right to
exclude granted by a patent no matter how the extension is brought about . . .
[and] prevent[ing] multiple infringement suits by different assignees
asserting essentially the same patented invention.” Hubbell, 709 F.3d at
1145 (citing In re Van Ornum, 686 F.2d 937, 943–44 (CCPA 1982) and In
re Fallaux, 564 F.3d 1313, 1310 (Fed. Cir. 2009)). While we appreciate the
Examiner’s cogent analysis of the policy justifications in the context of a
benefit potentially incurred by a parent corporation when patents separately
owned by two sister corporations are simultaneously enforced, on the record
before us, we are not persuaded that the underlying policy justifications for
obviousness-type double patenting show that parent company Bayer AG is a
common owner of the two patents.
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As Patent Owners point out (Appeal Br. 33–35), the Federal Circuit,
in a related case, explicitly indicated that courts have not yet considered “the
policies that underlie” obviousness-type double patenting in the particular
context of determining whether common ownership exists under the present
factual situation, in which “[t]he Leemans [’236] and Strauch patents,
having originated from separate inventors and unrelated companies (Hoechst
AG and Plant Genetic Systems), are now held by sibling companies.” Bayer
CropScience AG v. Dow Agrosciences LLC, 680 F. App’x 985, 995 (Fed.
Cir. 2017).
This statement by the Federal Circuit occurred in the court’s decision
on Dow Agrosciences’ appeal of the Eastern District of Virginia’s
confirmation of an international arbitration tribunal’s determination that the
Leemans ’236 patent was not invalid for obviousness-type double patenting
over the Strauch patents. Dow, 680 F. App’x at 988–90. In this decision,
the Federal Circuit explained that Dow had argued to the arbitration tribunal
that the Leemans ’236 patent was invalid for obviousness-type double
patenting over the Strauch patents, “contending that the patents were
commonly owned by Bayer AG, the parent company of Bayer CropScience
AG (owner of the Strauch patents) and Bayer CropScience NV (owner or
coowner of the Leemans patents).” Dow, 680 F. App’x at 988–94. The
Federal Circuit indicated that the arbitration tribunal had concluded that the
patents were not commonly owned because Bayer CropScience AG and
Bayer CropScience NV “were different entities and Dow had not provided
sufficient evidence to pierce the corporate veil separating them.” Id. In
affirming the district court’s confirmation of the arbitration tribunal’s
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decision, the Federal Circuit indicated that “[w]e cannot say that the
tribunal’s conclusion is contrary to public policy or reflects a manifest
disregard of the law under the strict standards governing such challenges.”
Id. at 994–95.
The Federal Circuit explained that because obviousness-type double
patenting is a judicially-created corollary to statutory double patenting,
which itself is a “judicial gloss” on 35 U.S.C. § 101, the “authoritative
source of law in this area is therefore judicial precedent.” Id. at 995. The
Federal Circuit indicated that “while the courts may someday reach the
present situation, they have not yet done so.” Id. The court noted, however,
that a “district-court decision concerning terminal disclaimer law supports
Bayer, not Dow, on this issue.” Id. at n.2 (citing Email Link Corp. v.
Treasure Island, LLC, No. 2:11-cv-1433-ECR-GWF, 2012 WL 4482576 (D.
Nev. Sept. 25, 2012).
The Federal Circuit further explained that “[n]o precedent cited to the
tribunal, or to us, considers and resolves in Dow’s favor the doctrinal
questions presented by this situation, including those addressed to the
policies that underlie the doctrine-the unjustified extension of exclusivity
rights against the public and the potential for separate assignee suits
enforcing the same rights.” Id. (citing Geneva Pharms., Inc. v.
GlaxoSmithKline PLC, 349 F.3d 1373, 1378 (Fed. Cir. 2003), Hubbell, 709
F.3d at 1145). The court concluded that “[w]ith the doctrinal question as
unsettled as it is for the present circumstances, the tribunal’s rejection of
Dow’s double patenting challenge cannot be declared a manifest disregard
of law or contrary to public policy.” Id.
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Accordingly, as the Federal Circuit indicated in Dow, the policy
justifications underlying obviousness-type double patenting alone do not
warrant a conclusion that the Leemans ’236 and Strauch patents are
commonly owned by Bayer AG. Thus, for similar reasons to those relied
upon in the Dow arbitration decision, the legal authority and evidence Patent
Owners rely on to support their position that an overlap in ownership does
not exist between the Leemans ’236 and Strauch patents is more persuasive
than the Examiner’s public policy justification. We are not persuaded that
Bayer AG’s alleged “beneficial ownership” of the Leemans ’236 and
Strauch patents alone is sufficient to render the Leemans ’236 and Strauch
patents “commonly owned” for the purposes of obviousness-type double
patenting. Nor are we persuaded that the underlying policy justifications for
obviousness-type double patenting show common ownership.8

8 We note that our holding is consistent with intervening case law from the
Federal Circuit in Immunex Corp. v. Sandoz Inc., No. 2020-1037, 2020 WL
3556098, slip op. at 9–15 (Fed. Cir. July 1, 2020). In Immunex, the Court
looked favorably on an “all substantial rights test” indicating it “appears
consistent with both principles underlying obviousness-type double
patenting” in evaluating when patents are considered “commonly owned for
the purposes of obviousness-type double patenting” Id. at 6. The Court
concluded that “the right to prosecute the patent at issue” is informative such
that where “a party ultimately controls prosecution of both sets of patents
[the patentee is prevented] the unjustifiable issuance of claims that are
patentably indistinct from claims already owned by that party.” Id. In
Immunex, not all substantial rights were conferred to a single owner, despite
the transfer of some rights to the prior art patent owner. Rather, in Immunex,
the patent owner retained key rights in the agreement. Id. at 18. In the
present case, however, Patent Owners have established that no ownership
rights are held by the parent company Bayer AG. Indeed, Bayer AG would
not have the authority to file a reexamination application of either the
Leemans ’236 or Strauch patents. Thus, despite some benefit Bayer AG
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Therefore, we are persuaded of error in the Examiner’s determination
that the Leemans ’236 and Strauch patents are “commonly owned.”
Consequently, because it is undisputed on the record before us that the
Leemans ’236 and Strauch patents do not share any inventors in common,
the Examiner does not establish a basis for rejecting claims 8, 9, 12, 15, 18,
and 19 of the Leemans ’236 patent for obviousness-type double patenting
over the applied claims of the Strauch patents.
We, accordingly, do not sustain the Examiner’s rejection of claims 8,
9, 12, 15, 18, and 19 of the Leemans ’236 patent for obviousness-type
double patenting over the applied claims of the Strauch patents in view of
Bevan.
CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 9, 12,
15, 18, 19
Obviousness-
type double
patenting
Strauch ‘894,
Bevan
8, 9, 12,
15, 18, 19
8, 9, 12,
15, 18, 19
Obviousness-
type double
patenting
Strauch ‘268,
Bevan
8, 9, 12,
15, 18, 19
Overall
Outcome
8, 9, 12,
15, 18, 19

REVERSED

may have by holding shares of both sister companies, Bayer AG cannot be a
common owner.
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tj

For PATENT OWNER:

BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road, Suite 100 East
Falls Church, VA 22042-1248

For THIRD PARTY REQUESTER:

MAGLEBY CATAXINOS & GREENWOOD
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Suite 1100
Salt Lake City, UT 84101