Genetics Institute, LLC v. Novartis Vaccines and Diagnostigs, Inc.

# NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit

GENETICS INSTITUTE, LLC,
Plaintiff-Appellant,
v.
NOVARTIS VACCINES AND DIAGNOSTIGS, INC.,
Defendant-Appellee.

2010-1264

Appeal from the United States District Court for the
District of Delaware in case no. 08-CV-0290, Judge Sue L.
Robinson.

GENETICS INSTITUTE, LLC,
Plaintiff-Appellee,
V.
NOVARTIS VACCINES AND DIAGNOSTICS, INC.,
Defendant-Appellant.

2010-1301

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Appeal from the United States District Court for the
District of Delaware in case no. 08-CV-0290, Judge Sue L.
Robinson.

## ON MOTION

Before LINN, DYK, and PROST, Circuit Judges.
PROST, Circuit Judge.

## ORDER

Novartis Vaccines and Diagnostics, Inc. (Novartis)
moves to dismiss appeal no. 2010-1264. Genetics Insti-
tute, LLC (Genetics) opposes. Novartis replies. Genetics
moves to dismiss Novartis' cross-appeal no. 2010-1301.
Novartis opposes. Genetics replies.

On May 16, 2008, Genetics filed a complaint in the
United States District Court for the District of Delaware
seeking an adjudication that its patent was entitled to
priority pursuant to 35 U.S.C. § 291 over two patents
assigned to Novartis. The Genetics patent was originally
set to expire on September 19, 2006. However, the United
States Patent and Trademark Office granted the Genetics
patent a patent term extension until February 28, 2010.
Novartis moved to dismiss Genetics' complaint for lack of
subject matter jurisdiction arguing that (1) Genetics
lacked standing because it was not the owner of the
patent at issue; (2) there was no interference-in-fact; and
(3) the extension of the Genetics patent did not apply to
the claims at issue and these claims were therefore ex-
pired. On February 24, 2010, the district court granted
Novartis' motion and entered judgment in Novartis' favor,
finding no interference-in-fact between the patents at
issue. Genetics appealed the judgment to this court.

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Novartis argues that this court should dismiss Genet-
ics' appeal for lack of jurisdiction. Novartis contends that,
pursuant to § 291, Genetics cannot pursue this appeal
because the patent at issue here now expired. The court
deems it the better course for the parties to put their
arguments concerning whether the court has jurisdiction
to consider Genetics' appeal in their briefs.

Novartis filed a cross-appeal, arguing that the district
court erred in not finding that the relevant claims of the
Genetics patent had expired in September 2006 so that
the district court lacked jurisdiction at the outset. Genet-
ics argues that because Novartis prevailed below and is
not seeking to reverse or modify the district court's judg-
ment of no interference, Novartis' cross-appeal must be
dismissed for lack of jurisdiction. Novartis contends that
its cross-appeal is proper to the extent that ruling on
when Genetics' patent expired would require modification
of the judgment.

We conclude Novartis' cross-appeal must be dis-
missed. A party lacks standing to cross-appeal unless it is
adversely affected by the judgment it seeks to challenge.
TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d
1151, 1156 (Fed. Cir. 2004); Bailey v. Dart Container
Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002). (appeal is
proper only if party "seeks to enlarge its own rights under
the judgment or to lessen the rights of its adversary under
the judgment."). In this case, the district court entered
judgment dismissing Genetics' complaint. Acceptance of
Novartis' argument concerning the expiration of the
patent claims would not result in a modification of the
judgment of dismissal. Instead, Novartis' argument
concerning the expiration date of the patent claims is
simply an alternative ground for affirmance of the judg-
ment and thus may be presented as an appellee.

An "appellee may, without taking a cross-appeal, urge
in support of a decree any matter appearing in the record,

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although his argument may involve an attack upon the
reasoning of the lower court or an insistence upon matter
overlooked or ignored by it." United States v. American
Ry. Express Co., 265 U.S. 425, 435 (1924). See also
Datascope Corp. v. SMEC, Inc., 879 F.2d 820, 822 n. 1
(Fed. Cir. 1989) (appellee may assert alternative grounds
for affirming the judgment that are supported by the
record).

Accordingly,

IT IS ORDERED THAT:

(1) Novartis' motion to dismiss is denied.

(2) Genetics' motion to dismiss Novartis' cross-appeal,
2010-1301, is granted.

(3) Each side shall bear its own costs in 2010-1301.

(4) The revised official caption for 2010-1264 is re-
flected above.

(5) Novartis' brief is due within 40 days of the date of
filing of this order.

FOR THE COURT

DEC 0 1 2010

/s/ Jan Horbaly

Date

Jan Horbaly Clerk

cc: Bradford J. Badke, Esq.
George A. Riley, Esq.
$20
JAN HORBALY
CLERK

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
DEQ Q 1 2010

Issued As A Mandate (for 2010-1301 only):
DEC 0 1 2010