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Claims Filed After Critical Date To Provoke Interference Are Barred Unless They Are Not Materially Different From Claims Filed Before Critical Date

Client Alert | 1 min read | 07.19.06

In Regents of the Univ. of Calif. v. Univ. of Iowa Research Found. (No. 05-1374; July 17, 2006), the Federal Circuit affirms a decision of the Board of Patent Appeals and Interferences (“Board”) that the University of California (“California”) failed to comply with 35 U.S.C. § 135(b)(1) (which states that an applicant cannot file “[a] claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent . . . unless such a claim is made prior to one year from the date on which the patent was granted”). In the application involved in the interference, California had filed a set of claims within one year of the issuance of the University of Iowa's patent, which were then cancelled in light of an new claim filed after the one-year period had expired. The Board found that California failed to comply with Section 135(b)(1), as its new claim was materially different than its earlier-filed claims. On appeal, California argued that only its earlier-filed claims must meet the 135(b)(1) test. The Federal Circuit, however, affirms the Board's decision and states that, “a party confronted with a section 135(b)(1) bar” can avoid the bar if it can “show that claims filed after the critical date find support in claims filed before the critical date.”

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Client Alert | 5 min read | 12.12.25

Eleventh Circuit Hears Argument on False Claims Act Qui Tam Constitutionality

On the morning of December 12, 2025, the Eleventh Circuit heard argument in United States ex rel. Zafirov v. Florida Medical Associates, LLC, et al., No. 24-13581 (11th Cir. 2025). This case concerns the constitutionality of the False Claims Act (FCA) qui tam provisions and a groundbreaking September 2024 opinion in which the United States District Court for the Middle District of Florida held that the FCA’s qui tam provisions were unconstitutional under Article II. See United States ex rel. Zafirov v. Fla. Med. Assocs., LLC, 751 F. Supp. 3d 1293 (M.D. Fla. 2024). That decision, penned by District Judge Kathryn Kimball Mizelle, was the first success story for a legal theory that has been gaining steam ever since Justices Thomas, Barrett, and Kavanaugh indicated they would be willing to consider arguments about the constitutionality of the qui tam provisions in U.S. ex rel. Polansky v. Exec. Health Res., 599 U.S. 419 (2023). In her opinion, Judge Mizelle held (1) qui tam relators are officers of the U.S. who must be appointed under the Appointments Clause; and (2) historical practice treating qui tam and similar relators as less than “officers” for constitutional purposes was not enough to save the qui tam provisions from the fundamental Article II infirmity the court identified. That ruling was appealed and, after full briefing, including by the government and a bevy of amici, the litigants stepped up to the plate this morning for oral argument....

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