United States Court of Appeals 

for the Federal Circuit ______________________ 

SNIPR TECHNOLOGIES LIMITED,

Appellant

v.

ROCKEFELLER UNIVERSITY,

Appellee

KATHERINE K. VIDAL, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2022-1260

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 106,123.

______________________ 

Decided: July 14, 2023

______________________ 

BRIAN ROBERT MATSUI, Morrison & Foerster LLP, 

Washington, DC, argued for appellant. Also represented 

by SETH W. LLOYD; PARISA JORJANI, MATTHEW IAN 

KREEGER, San Francisco, CA.

 SALVATORE J. ARRIGO, III, Arrigo, Lee, Guttman, & 

Mouta-Bellum LLP, Washington, DC, argued for appellee. 

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2 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

Also represented by HARRY JOEL GUTTMAN. 

 SARAH E. CRAVEN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor. Also represented by THOMAS W. KRAUSE,

MONICA BARNES LATEEF, AMY J. NELSON, FARHEENA 

YASMEEN RASHEED. 

______________________ 

Before CHEN, WALLACH, and HUGHES, Circuit Judges.

CHEN, Circuit Judge. 

In 2011, Congress enacted the Leahy-Smith America 

Invents Act (AIA), transforming the U.S. patent system 

from a first-to-invent to a first-inventor-to-file system for 

determining patent priority. Pub. L. No. 112-29, 125 Stat. 

284 (2011). Under the old, pre-AIA first-to-invent system, 

the first person to invent had “priority” to an invention and 

was entitled to a patent, even if a different inventor was 

the first to file a patent application for that invention. Under the AIA’s new first-inventor-to-file system, however, 

the first person to file a patent application on an invention 

has priority and is entitled to a patent, even when another 

inventor can establish an earlier invention date. 

As part of the new first-inventor-to-file patent system, 

Congress eliminated from the Patent Act “interferences,” 

which are administrative priority contests the U.S. Patent 

and Trademark Office’s (Patent Office) Patent Trial and 

Appeal Board (Board) has historically conducted in the old 

first-to-invent regime to determine which inventor among 

two inventors who claim the same invention could prove an 

earlier invention date. The AIA’s effective date provision, 

AIA § 3(n), makes clear that interferences and other firstto-invent aspects of pre-AIA law do not apply to patents exclusively governed by the AIA and issued under the new 

first-inventor-to-file regime. 

The Board declared an interference between five firstinventor-to-file patents owned by SNIPR Technologies 

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SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY 3

Limited (SNIPR) and a first-to-invent patent application 

assigned to Rockefeller University (Rockefeller) that resulted in the cancellation of all claims of SNIPR’s patents. 

SNIPR Tech. Ltd. v. Rockefeller Univ., No. 106,123, 2021 

WL 8566747 (P.T.A.B. Nov. 19, 2021) (Decision); SNIPR 

Tech. Ltd. v. Rockefeller Univ., No. 106,123, 2021 WL 

8566749, at *1–2 (P.T.A.B. Nov. 19, 2021) (Judgment). 

SNIPR appeals, contending that the Board never should 

have subjected its first-inventor-to-file patents to a vestige 

of the old first-to-invent system: an invention date contest 

against Rockefeller’s first-to-invent application through an 

interference. Because the text, purpose, and history of the 

AIA make clear that first-inventor-to-file patents exclusively governed by the AIA cannot be subject to an interference (save for one exception not applicable here), we 

reverse. 

BACKGROUND

I. Statutory Background

Patent priority establishes who is entitled to a patent 

on a particular invention claimed by different parties. 

Passed in 2011, the AIA changed how priority is determined, by converting the U.S. patent system from a firstto-invent to a first-inventor-to-file system. Pub. L. No. 112-

29, 125 Stat. 284. Under the first-to-invent system, the 

first person to invent a claimed invention had priority and 

was entitled to a patent. See pre-AIA1 35 U.S.C. § 102(g). 

This is true even when a later inventor beats the first inventor to filing a patent application. See id. When two different inventive entities claimed the same subject matter 

in a patent or patent application, the Patent Office would 

conduct an often arduous administrative proceeding—an 

interference proceeding—to determine the right of priority, 

i.e., who was the first inventor. Pre-AIA 35 U.S.C. § 135; 

1 “Pre-AIA” refers to the versions in effect immediately before the AIA’s effective date of March 16, 2013.

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4 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

H.R. Rep. No. 112-98, at 40–41 (2011); S. Rep. No. 111-18, 

at 4 (2009)2. Under the AIA, however, interferences to determine which inventor had the earliest invention date are

no longer necessary because it is now the first filer—not 

the first inventor—who has priority and is entitled to a patent. 

Congress had several reasons for transitioning to a 

first-inventor-to-file system. Congress observed that using 

a patent’s filing date to determine priority among competing inventors is objective and simple, whereas an invention 

date determination “is often uncertain, and, when disputed, typically requires corroborating evidence as part of 

an adjudication.” H.R. Rep. No. 112-98, at 40; S. Rep. 

No. 111-18, at 4. In particular, resolving such invention 

date disputes required “a lengthy, complex and costly administrative proceeding (called an ‘interference proceeding’)” that “can take years to complete . . . , cost hundreds 

of thousands of dollars, and require extensive discovery.” 

H.R. Rep. No. 112-98, at 40–41; S. Rep. No. 111-18, at 4. 

Moreover, the specter of an interference proceeding never 

goes away for patent holders: “because it is always possible 

that an applicant could be involved in an interference proceeding, companies must maintain extensive recording and 

document retention systems in case they are later required 

to prove the date they invented the claimed invention.” 

H.R. Rep. No. 112-98, at 41; S. Rep. No. 111-18, at 4.

Congress also recognized that, by changing to a firstinventor-to-file system, inventors and companies filing for 

patent protection in foreign countries (which all use the 

first-inventor-to-file system) would not be forced to follow 

two different filing systems. H.R. Rep. No. 112-98, 

at 41–42; S. Rep. No. 111-18, at 5. Indeed, the U.S. was the 

last remaining country in the world to use a first-to-invent 

2 The Senate Report relates to an earlier version of 

the AIA, but is mostly identical to the relevant parts of the 

House Report.

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SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY 5

system prior to the passage of the AIA. David S. Abrams 

& R. Polk Wagner, Poisoning the Next Apple? The America 

Invents Act and Individual Inventors, 65 Stan. L. Rev. 517, 

520 n.10 (2013) (citing Gerald J. Mossinghoff & Vivian S. 

Kuo, World Patent System Circa 20XX, A.D., 38 IDEA 529, 

548, 548 n.38 (1998)); see also H.R. Rep. No. 112-98, at 40–

41; S. Rep. No. 111-18, at 3–4 (both explaining that “[e]very 

industrialized nation other than the United States uses a 

patent priority system commonly referred to as ‘first-tofile.’”). In short, Congress disliked interferences and 

wanted to get rid of them, and also sought to align the 

United States with the patent filing systems around the 

world.3

Converting to a first-inventor-to-file patent system required significant changes to the statutory scheme. 

The AIA redefined what constitutes “prior art” against 

a patent or application. AIA § 3(b)–(c). Before the AIA’s 

passage, prior art referred to certain documents available 

before the actual date of invention. See pre-AIA 35 U.S.C.

§ 102(a), (e) (entitling a person to a patent unless the invention was described in certain patents or printed publications “before the invention . . . by the applicant for 

patent”). Under the AIA, prior art now refers to certain

documents available before the “effective filing date of the 

claimed invention.” AIA § 3(b)(1) (amending 35 U.S.C. 

§ 102(a)). Compare pre-AIA 35 U.S.C. § 102, with 35 

U.S.C. § 102. The AIA similarly changed the obviousness

3 Congress’s motivations are also reflected in the 

text of the AIA itself, which states that the purpose of the 

AIA is to: (1) provide inventors with greater certainty as 

to the scope of protection provided by the grant of exclusive 

rights to their discoveries, and (2) harmonize the U.S. patent system with “the patent systems commonly used in 

nearly all other countries throughout the world,” “thereby 

promot[ing] greater international uniformity and certainty.” AIA § 3(o), (p). 

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6 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

standard to comport with a first-inventor-to-file world. Under pre-AIA law, obviousness was considered “at the time 

the invention was made”—i.e., the date of invention. PreAIA 35 U.S.C. § 103. With the AIA, obviousness is now

considered from “the effective filing date of the claimed invention.” 35 U.S.C. § 103.

Congress also removed the statutory requirement for 

“priority of invention” entitling only the first inventor to a 

patent and eliminated the mechanisms for determining 

such priority. Pre-AIA 35 U.S.C. § 102(g) authorized either 

the Patent Office under pre-AIA § 135 or a district court 

under pre-AIA 35 U.S.C. § 291 to conduct an interference 

to determine who among competing inventors had “priority 

of invention,” that is, who was the first inventor.4 See also

pre-AIA § 135 (The Board “shall determine questions of

priority of inventions”). The AIA, however, removed invention priority as a patentability requirement from § 102. 

AIA § 3(b)(1). Compare pre-AIA § 102(g), with 35 U.S.C. 

§ 102. The AIA also repealed interferences in preAIA §§ 135 and 291, replacing it with a new proceeding 

called a “derivation.” AIA § 3(h), (i) (amending 35 U.S.C. 

§§ 135, 291); 35 U.S.C. §§ 135, 291. Where interference 

proceedings determined who was the first inventor, derivation proceedings determine whether an earlier filer had derived the claimed invention from a later filer. Compare 

pre-AIA §§ 102(g), 135, with 35 U.S.C. §§ 135, 291. Relatedly, Congress deleted all remaining references to interferences in the statutory scheme. AIA § 3(j) (eliminating 

references to interferences in 35 U.S.C. §§ 134, 145, 146, 

154, 305). The priority of invention requirement and related interferences were no longer relevant because patentability under the AIA is based on the “effective filing date 

of the claimed invention” instead of the actual date of 

4 We collectively refer to pre-AIA 35 U.S.C. 

§§ 102(g), 135, and 291 as the “Interference Provisions.” 

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SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY 7

invention. AIA §§ 3(b)(1), 3(c). Compare pre-AIA 35 U.S.C. 

§§ 102–103, with 35 U.S.C. §§ 102–103. 

Given these and other significant changes, Congress 

chose not to apply the AIA’s amendments retroactively to 

existing patents and pending applications. Instead, Congress enacted timing provisions specifying that the AIA’s 

new first-to file regime “shall apply” to patents and applications that “contain[] or contained at any time . . . a 

claim . . . that has an effective filing date . . . on or after 

[March 16, 2013].” AIA § 3(n)(1) (emphasis added). Accordingly, for patents and applications with an effective filing date before March 16, 2013, the pre-AIA first-to-invent 

system continues to apply. See AIA § 3(n)(1); Biogen MA, 

Inc. v. Japanese Found. for Cancer Rsch., 785 F.3d 648, 655 

(Fed. Cir. 2015) (explaining that under AIA § 3(n)(1), “new 

AIA provisions [apply] only to new applications” and “interference proceedings are to continue with respect 

to . . . applications filed before March 16, 2013.”). 

Congress also went out of its way to specify a small subset of AIA first-inventor-to-file patents that would be nonetheless subject to interferences. Under this exception, preAIA Interference Provisions “shall apply to each claim” of 

any AIA first-inventor-to-file patent or application “if such 

application or patent contains or contained at any time” a 

claim with an effective filing date before March 16, 2013. 

AIA § 3(n)(2). Thus, AIA § 3(n)’s effective date provisions

created three distinct categories of patents and applications: 

Pure pre-AIA patents and applications: patents and applications that have only ever contained claims with pre-AIA effective filing dates 

(i.e., before March 16, 2013) are subject to the patentability requirements and Interference Provisions in the pre-AIA versions of 35 U.S.C. §§ 102, 

103, 135, and 291. AIA § 3(n)(1).

Pure AIA patents and applications: patents 

and applications that have only ever contained 

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8 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

claims with post-AIA effective filing dates (i.e., on 

or after March 16, 2013) are subject to the patentability requirements and derivation proceedings in 

the AIA versions of 35 U.S.C. §§ 102, 103, 135, and 

291. AIA § 3(n)(1). 

Mixed patents and applications: patents and 

applications that contain (or contained at any time) 

at least one claim with a pre-AIA effective filing 

date and at least one claim with a post-AIA effective filing date are subject to the patentability requirements in the AIA versions of 35 U.S.C. 

§§ 102–103 but are also subject to the pre-AIA Interference Provisions. See AIA § 3(n)(1)–(2).

II. The Patents and Application at Issue

The technology at issue relates to methods of selectively killing bacteria in a mixed set of bacteria using clustered regularly interspaced short palindromic repeats 

(CRISPR) gene editing. SNIPR owns a family of five patents directed to this technology: U.S. Patent Nos. 

10,463,049; 10,506,812; 10,561,148; 10,524,477; 10,582,712

(SNIPR Patents). The SNIPR Patents claim priority to 

PCT Application No. PCT/EP2016/059803, filed May 3, 

2016. Because their effective filing dates are after March 

16, 2013, the SNIPR Patents are pure AIA patents that 

were examined and issued under the AIA’s first-inventorto-file patentability requirements. 

Rockefeller’s Application No. 15/159,929 (Rockefeller 

Application) is also directed to selectively killing bacteria. 

It claims priority to PCT Application No. 

PCT/US2014/015252, filed on February 7, 2014, and U.S. 

Provisional Application 61/761,971 (Rockefeller Provisional), filed February 7, 2013. Based on the Rockefeller 

Provisional’s filing date, the Rockefeller Application is a 

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SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY 9

pure pre-AIA application. Appellee’s Br. 14; Intervenor’s 

Br. 1 n.1.5

III. Procedural Background

The Board initially declared an interference between 

claims 20–33 of the Rockefeller Application and all claims 

of the SNIPR Patents, to determine which party was the 

first to invent the claimed subject matter. J.A. 666, 672–

73. Due to the Rockefeller Application’s earlier filing date, 

the Board identified Rockefeller as the senior party, with 

an accorded benefit date6 of February 7, 2014, and SNIPR 

as the junior party, with an accorded benefit date of May 3, 

2016. J.A. 668–70, 673.

SNIPR moved to terminate the interference as contrary to the AIA because “interference[s are] unavailable to 

assess patents that are governed by the AIA.” J.A. 872. 

The Board subsequently redeclared an interference on 

July 21, 2020, maintaining SNIPR’s benefit date but according Rockefeller an earlier, pre-AIA benefit date of February 7, 2013. J.A. 877, 881.

SNIPR again moved to terminate the interference, arguing that the AIA eliminated interferences for AIA patents such as the SNIPR Patents. J.A. 922–35. The Board 

denied SNIPR’s motion, reasoning that pre-AIA patent 

claims (such as Rockefeller’s) must “comply with [pre-AIA] 

35 U.S.C. § 102(g),” which requires an interference under

5 There is some dispute as to whether the Rockefeller 

Application is a pure pre-AIA or mixed application. Appellant’s Br. 36–37, 59; Intervenor’s Br. 1 n.1, 2. Regardless, 

the status of the Rockefeller Application does not affect our 

analysis.

6 The accorded benefit date is the date for which the 

Board recognizes that a patent application provides a 

proper constructive reduction to practice of the invention 

under pre-AIA 35 U.S.C. § 102(g)(1). See 37 C.F.R. 

§ 41.201. 

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10 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

pre-AIA § 135 between the claims of the Rockefeller Application and the SNIPR Patents. Decision, 2021 WL 

8566747, at *2–6. 

Because SNIPR had not filed any priority statement 

asserting an invention date earlier than Rockefeller’s earliest accorded benefit date, the Board found that SNIPR 

failed to overcome Rockefeller’s senior party status. Id.

at *9. Thus, the Board entered judgment against SNIPR

and cancelled all claims of the SNIPR Patents. Judgment, 

2021 WL 8566749, at *1–2. 

SNIPR timely appealed. We have jurisdiction under 28 

U.S.C. § 1295(a)(4)(A) (2011). 

STANDARD OF REVIEW

Statutory interpretation is a question of law we review 

de novo. VirnetX Inc. v. Apple Inc., 931 F.3d 1363, 1369 

(Fed. Cir. 2019) (citation omitted).7

DISCUSSION

The issue before us is whether pure AIA patents may 

be part of an interference. Specifically, the dispute is 

whether the Board has the authority to cancel SNIPR’s 

pure AIA claims through an interference for lack of invention priority under pre-AIA § 102(g). SNIPR argues that 

the pure AIA SNIPR Patents are exclusively governed by 

AIA law, and thus cannot be part of an interference, a proceeding the AIA removed from the Patent Act. Appellant’s 

Br. 39–52. Rockefeller and the Director respond that AIA 

§ 3(n) requires Rockefeller’s pre-AIA application to be evaluated under pre-AIA § 102(g), which requires an interference under pre-AIA § 135(a) to determine priority of 

invention. Appellee’s Br. 14–15; Intervenor’s Br. 17–18. 

Because pre-AIA § 135(a) authorizes the Director to declare an interference between any interfering application

7 The Patent Office did not seek Chevron deference 

for any of its statutory interpretations. 

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SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY 11

and “any unexpired patent,” they argue that the Director 

can declare an interference that includes pure AIA patents 

like SNIPR’s. Appellee’s Br. 19–21; Intervenor’s Br. 17–21. 

We agree with SNIPR and hold that pure AIA patents 

may not be part of an interference.8 We do not interpret 

the language “any unexpired patent” in pre-AIA § 135 to 

include pure AIA patents. SNIPR’s pure AIA patents were 

examined and issued under the AIA’s first-inventor-to-file

patentability requirements; they cannot then be cancelled 

under the different, pre-AIA invention priority requirements. As such, the Director erred by declaring an interference involving the SNIPR Patents. 

I. AIA § 3(n)

“Statutory interpretation begins with the language of 

the statute, the plain meaning of which we derive from its 

text and its structure.” McEntee v. Merit Sys. Prot. Bd., 

404 F.3d 1320, 1328 (Fed. Cir. 2005). Based on the plain 

language of AIA § 3(n) and the statutory purpose and history of the AIA, we conclude that pure AIA patents may not 

be part of an interference.

AIA § 3(n) makes clear that only pure pre-AIA and 

mixed patents may be part of an interference. Section 3(n)(1) provides that the AIA’s amendments to the Patent Act, that is, the first-inventor-to-file regime, “shall 

apply” to any patents that have ever contained a claim with 

an effective filing date on or after March 16, 2013:

(n) EFFECTIVE DATE.— 

(1) IN GENERAL.—Except as otherwise 

provided in this section, the amendments 

made by this section shall take effect [on 

8 Because we agree with SNIPR’s arguments that 

the AIA bars subjecting its patents to an interference, we 

need not address its arguments alleging other errors by the 

Board. See, e.g., Appellant’s Br. 52–60.

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12 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

March 16, 2013], and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at 

any time— 

(A) a claim to a claimed invention 

that has an effective filing date as 

defined in section 100(i) of title 35, 

United States Code, that is on or after [March 16, 2013]; or 

(B) a specific reference under section 120, 121, or 365(c) of title 35, 

United States Code, to any patent 

or application that contains or contained at any time such a claim. 

AIA § 3(n)(1) (emphasis added). The word “shall” is “both 

mandatory and comprehensive” and “generally imposes a 

nondiscretionary duty.” SAS Inst., Inc. v. Iancu, 138 S. Ct. 

1348, 1354 (2018). Thus, the AIA’s first-inventor-to-file requirements “shall” apply to patent claims with an effective 

filing date on or after March 16, 2013; because § 3(n)(1) 

does not permit the AIA’s amendments to apply retroactively, pre-AIA law, then, continues to apply to patents 

with an effective filing date before March 16, 2013. See id.;

see also Biogen, 785 F.3d at 655.9 Because the AIA repealed interferences in pre-AIA § 135 and replaced them 

with derivations, interferences simply do not exist for AIA 

patents unless Congress specifically provides otherwise. 

On the very issue of whether any AIA patents may be 

part of an interference, Congress specifically considered 

9 In Biogen, we considered AIA § 3(n) to determine 

whether the AIA eliminated the district court’s jurisdiction 

to review interference decisions under pre-AIA 35 U.S.C. 

§ 146. Biogen, 785 F.3d at 654. We did not, however, address whether AIA § 3(n) allows pure AIA patents to be 

part of an interference. 

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SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY 13

that question and created one limited exception for “mixed

patents” in AIA § 3(n)(2), which states: 

(2) INTERFERING PATENTS.—The provisions of 

sections 102(g), 135, and 291 of title 35, United 

States Code, as in effect on [March 15, 2013], shall 

apply to each claim of an application for patent, 

and any patent issued thereon, for which the 

amendments made by this section also apply, if 

such application or patent contains or contained at 

any time— 

(A) a claim to an invention having an effective filing date as defined in section 100(i) 

of title 35, United States Code, that occurs 

before [March 16, 2013]; or

(B) a specific reference under section 120, 

121, or 365(c) of title 35, United States 

Code, to any patent or application that contains or contained at any time such a claim.

AIA § 3(n)(2) (emphasis added); see supra Background § I. 

So, for example, for any mixed patent or application that 

includes a patent claim to which the AIA amendments apply (because that claim’s effective filing date is on or after 

March 16, 2013), but also contains or once contained a patent claim having an effective filing date before March 16, 

2013, then the pre-AIA Interference Provisions “shall apply.” Through this one exception, Congress specifically circumscribed the subset of patents and applications to which 

the AIA applies that nonetheless may be subject to an interference—so-called mixed patents and applications. The 

provision of AIA § 3(n)(2) to expand the scope of interference practice in a limited manner is thus strong evidence

that Congress did not wish to further open the interference 

door to pure AIA patents and applications. “Where Congress explicitly enumerates certain exceptions to a general 

prohibition, additional exceptions are not to be implied, in 

the absence of evidence of a contrary legislative intent.” 

United States v. Smith, 499 U.S. 160, 167 (1991) (quoting 

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14 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

Andrus v. Glover Constr. Co., 446 U.S. 608, 616–617 

(1980)). 

There is no hint of congressional intent to expose pure 

AIA first-inventor-to-file patents and applications to interferences. To the contrary, the purpose and history behind 

the AIA reinforce our understanding of the text. Congress

was dead set on eradicating interferences for new applications, criticizing them as lengthy, expensive, and requiring

companies to maintain extensive documentation and systems to prove the date of their invention. See H.R. Rep. 

No. 112-98, at 41; S. Rep. No. 111-18, at 4. By enacting the 

AIA, Congress “eliminate[d] costly, complex interference 

proceedings” “[a]s part of the transition to a simpler, more 

efficient first-inventor-to-file system.” H.R. Rep. 

No. 112-98, at 42; S. Rep. No. 111-18, at 5–6. Congress’s 

stated mission to eliminate interferences further supports 

our understanding that AIA § 3(n) should not be read to 

allow pure AIA patents to be part of interference proceedings.

Read together, AIA § 3(n)(1) and AIA § 3(n)(2)’s limited 

exception create two separate worlds for interferences: 

pure pre-AIA and mixed patents are subject to interferences; pure AIA patents are not.10 Accordingly, we conclude that the AIA bars pure AIA patents from being 

subject to an interference. 

II. Pre-AIA § 135

Rockefeller and the Director argue that the SNIPR Patents can be subject to an interference based on the 

10 While AIA § 3(n) put applicants on notice that 

mixed patents would be subject to AIA patentability requirements and pre-AIA interferences, the Director 

acknowledges that the Patent Office has never put applicants on notice of her current interpretation that pure AIA 

patents would also be subject to interferences. Oral Arg. 

at 23:43–25:00.

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SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY 15

language “any unexpired patent” in pre-AIA § 135(a). Appellee’s Br. 19–21; Intervenor’s Br. 17–21. In their view, 

any pure AIA patent can be hauled into an interference for 

an invention priority contest under pre-AIA law with a 

pure pre-AIA or mixed application claiming the same subject matter. 

Pre-AIA § 135(a) authorizes the Director to declare an 

interference between an application that would interfere 

with “any unexpired patent,” wherein the Board “shall determine questions of priority of the inventions.” Pre-AIA 

§ 135(a). Read in context with the AIA, however, the language “any unexpired patent” from pre-AIA § 135 does not 

include pure AIA patents. 

“Our duty [in statutory construction] is to construe 

statutes, not isolated provisions.” King v. Burwell, 576 

U.S. 473, 486 (2015) (internal quotations and citations 

omitted). Thus, “we must read the words in their context 

and with a view to their place in the overall statutory 

scheme.” Id. (internal quotations and citations omitted). 

Here, we must read pre-AIA § 135 in light of the AIA and 

its effective date provisions in AIA § 3(n). For new applications, the AIA entirely replaced interference proceedings 

with derivation proceedings in 35 U.S.C. § 135 and deleted 

all other references to interferences in 35 U.S.C. §§ 134, 

145, 146, 154, 305. AIA §§ 3(i), 3(j)(2). The AIA also removed priority of invention as a basis for patentability, rendering interferences meaningless for pure AIA patents. 

AIA § 3(b)(1) (amending § 102 to have no requirement for 

invention priority). Compare pre-AIA 35 U.S.C. § 102, with

35 U.S.C. § 102. AIA § 3(n)(1) requires that the new versions of §§ 135 and 102 apply to pure AIA patents, while 

AIA § 3(n)(1)–(2) requires that pre-AIA versions of §§ 135 

and 102 apply to pure pre-AIA and mixed patents. Thus, 

when pre-AIA § 135 is read in context with the AIA, it is 

clear that the language “any unexpired patent” cannot refer to pure AIA patents. Such a reading would be inconsistent with the plain language of AIA § 3(n), which does 

not allow for pure AIA patents to be part of interferences, 

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16 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

and the AIA amendments repealing interferences and the 

priority of invention requirement for pure AIA patents. 

 Moreover, interpreting “any unexpired patent” in preAIA § 135 to include pure AIA patents would defeat a central purpose of the AIA. See King, 576 U.S. at 492 (rejecting an interpretation of the provision that would create the 

very issues that the statutory scheme was designed to 

avoid). The goal of the AIA was to transition the U.S. patent system to a first-inventor-to-file system and eliminate 

the specter of interferences going forward for new applications. See supra Background § I. Yet the Director acknowledges that this interpretation would permit pure AIA 

patents to be dragged into interferences until the year 

2034, when there are no more pre-AIA patents or applications. Oral Arg. at 26:46–27:18. We are not convinced that 

Congress, without explicitly saying so, intended to subject 

AIA patents to interferences for over twenty years after the 

AIA’s effective date when the purpose of the AIA was to 

move the U.S. patent system to a first-inventor-to-file system and eliminate interferences. AIA § 3(o), (p); H.R. Rep. 

No. 112-98, at 40–42; S. Rep. No. 111-18, at 4–6. Thus, the 

language “any unexpired patent,” when read in context 

with the AIA, cannot refer to pure AIA patents. 

Relatedly, we also conclude that the specific provisions 

of AIA § 3(n) control over the general “any unexpired patent” language in pre-AIA § 135. See Bulova Watch Co. v. 

United States, 365 U.S. 753, 758 (1961) (“[A] specific statute controls over a general one ‘without regard to priority 

of enactment.’”) (quoting Townsend v. Little, 109 U.S. 504, 

512 (1883)). Unlike AIA § 3(n)(1), pre-AIA § 135 does not

specifically address whether pure AIA patents may be part 

of interferences and subject to first-to-invent patentability 

requirements. From these AIA statutory provisions, as explained above, the answer is no. See supra Discussion § I. 

The specific provisions of AIA § 3(n) control over the general “any unexpired patent” language in pre-AIA § 135.

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SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY 17

Finally, Rockefeller’s and the Director’s interpretation 

of pre-AIA § 135 would render superfluous Congress’s limited exception in AIA § 3(n)(2). Bilski v. Kappos, 561 

U.S. 593, 607–08 (2010) (stating that courts should not “interpret[ ] any statutory provision in a manner that would 

render another provision superfluous”); Marx v. Gen. Revenue Corp., 568 U.S. 371, 386 (2013) (“[T]he canon against 

surplusage is strongest when an interpretation would render superfluous another part of the same statutory 

scheme.”). Under Rockefeller’s and the Director’s interpretation of “any unexpired patent” in pre-AIA § 135 as encompassing any pure pre-AIA, mixed, or pure AIA patent, 

AIA § 3(n)(2) would not be necessary to subject mixed patents to interferences. We reject an interpretation that 

would render AIA § 3(n)(2) superfluous.11 Accordingly, we 

conclude that “any unexpired patents” in pre-AIA § 135 

does not include pure AIA patents.

III. Rockefeller’s and the Director’s Remaining Arguments

Rockefeller and the Director assert that without an interference, the Patent Office will be forced to issue two patents to the same invention under the pre-AIA and AIA 

systems, which conflicts with the principle that only one 

patent may be issued for an invention. Appellant’s

Br. 25–26; Intervenor’s Br. 17, 19–20, 21 n.10, 23–25, 27. 

The AIA, however, provides several mechanisms that allow 

the Patent Office to reconsider a patent it incorrectly 

11 The Director asserts that pre-AIA § 135 “only bars 

pure AIA applications and patents” from “provoking an interference, not from any involvement in an interference.” 

Intervenor’s Br. 21. Under pre-AIA § 135, “an application” 

may provoke an interference with “any unexpired patent.” 

The Director, however, fails to explain why “an application” 

excludes pure AIA patents but “any unexpired patent” can 

be understood differently to include pure AIA patents. 

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18 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

granted: (1) inter partes review under 35 U.S.C. §§ 311–

319, (2) post-grant review under 35 U.S.C. §§ 321–329, and

(3) ex parte reexamination under 35 U.S.C. §§ 301–305.12 

And because a pure pre-AIA application will always have 

an effective filing date before March 16, 2013, while a pure

AIA patent will have an effective filing date on or after that 

date, the pure pre-AIA application, once published or patented, will be prior art to the pure AIA patent under 35 

U.S.C. § 102(a)(2), thus ensuring that two patents for the 

same invention will not be granted under the two different 

regimes. Appellant’s Reply Br. 12; see Oral Arg. at 9:47–

10:00, 10:21–10:40, 39:42–40:18. Under the AIA, these are 

the mechanisms available to ensure two patents do not issue to the same invention.

The Director identifies a single, highly unusual scenario in which a pure pre-AIA application would not be 

prior art to a pure AIA patent under 35 U.S.C. 

§ 102(b)(2)(B), thereby permitting two patents on the same

invention. Intervenor’s Br. 8–9. The Director’s scenario is 

predicated on the alignment of several circumstances:

1) the AIA patent must have been filed on or after 

March 16, 2013, see AIA § 3(n)(1);

2) the subject matter disclosed in the AIA patent 

must have been previously disclosed by the inventor of the AIA patent, see 35 U.S.C. § 102(b)(2)(B);

3) the previous disclosure must have been made 

less than one year before the AIA patent was filed 

12 All parties generally agree that inter partes review, 

post-grant review, and ex parte reexamination are available to challenge the patentability of issued patents under 

the AIA. Oral Arg. at 11:30–11:58, 16:20–16:52, 39:28–

40:06. Thus, SNIPR’s patents could be challenged through 

inter partes review or ex parte reexamination.

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SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY 19

so that the previous disclosure cannot be considered prior art, see 35 U.S.C. § 102(b)(1); 

4) the pre-AIA application being considered as 

prior art must be a U.S. patent, published application, or published PCT application, see 35 U.S.C. 

§ 102(a)(2); 

5) the pre-AIA application being considered as 

prior art must have an effective filing date before 

March 16, 2013, see AIA § 3(n)(1);

6) the pre-AIA application must have been filed between the disclosure of the AIA invention and the 

filing of the AIA application or patent, see 35 U.S.C. 

§ 102(b)(2)(b); and

7) the pre-AIA application and the AIA patent must 

claim the same invention.

As is apparent, this scenario is a remote one, contingent on many facts coming together and the filing dates for 

the AIA patent and pre-AIA application necessarily occurring close in time around March 16, 2013 and less than a 

year apart. The Director concedes that she is not aware of 

this scenario having occurred. Oral Arg. at 20:20–21:21. 

Given the unlikelihood of this obscure situation, we are not 

persuaded that Congress believed interferences must be 

permitted between pure AIA patents and pre-AIA applications up through 2034. 

IV. SNIPR Patents

Having determined that the AIA excludes pure AIA patents from interferences, we now turn to the facts before 

us. It is undisputed that the SNIPR Patents have an effective filing date after March 16, 2013 and are pure AIA patents. Appellant’s Br. 11, 32; Appellee’s Br. 3–4; 

Intervenor’s Br. 10. Because pure AIA patents may not be 

part of interferences, the Director erred by subjecting the 

SNIPR Patents to an interference. This error is true

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20 SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY

regardless of whether the Rockefeller Application is a pure 

pre-AIA application or a mixed application.13 

CONCLUSION

We have considered Rockefeller’s and the Director’s remaining arguments and find them unpersuasive. For the 

foregoing reasons, we reverse.

REVERSED

13 The filing date of Rockefeller’s published application predates the earliest effective filing date of the SNIPR 

Patents and is therefore prior art under the AIA’s 35 U.S.C.

§ 102(a). Whether that published application anticipates 

any of SNIPR’s claims was never adjudicated during the 

interference. Likewise, the Board never considered 

whether the Rockefeller Application satisfies the written 

description and enablement requirements for the claims 

Rockefeller amended to correspond to the SNIPR Patents. 

These issues remain disputed between the parties. 

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