Interferences : US PTO Litigation Alert™

How is Interference Practice Doing? Alive & Well, Thank You.

Scott Daniels | February 27, 2012

Where should we look for guidance in following the recently proposed rules for the various post-issuance proceedings created by the AIA?  A prime source for such guidance will be rich lore of past interference practice, as suggested by the many parallels between the proposed AIA rules and existing interference rules.  The PTO suggested as much when it identified interferences as “contested cases” in its comments on the proposed rules.

Interference cases themselves – not just the case law they have generated over the years – will also continue, at least in some instances, to be an effective means for challenging patents for years to come, despite our recent adoption of a first to file system.  In particular, interference is often a recommended approach for a party to assert that it has been improperly omitted as an inventor from an issued patent.

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Boston Scientific Stent Patent Survives Interference, Endosystems Patents Do Not

Scott Daniels | August 30, 2011

Interference practice has long enjoyed a reputation for requiring precise attention to detail and complete adherence to its rules.  That reputation can only be enhanced by the PTO’s ruling yesterday in Roubin v. Burmeister (Patent Interference No. 105,794), the real parties-in-interest being Endosystems and Boston Scientific, respectively. 

The interference was suggested by Boston Scientific – specifically, an interference between its claims in Application No. 09/427,291 and the claims of Endosystems’ U.S. Patent Nos. 5,827,321, 6,106,548 and 6,475,236.  The PTO later declared the interference, defining the interfering subject matter in the form of an alternative count: stents according to claim 1 of Endosystems’ 321 patent or claim 22 of Boston Scientific’s ‘291 application.  Thus, the party that could prove that it was the first to invent a stent within the scope of the alternative count would win the interference, whereas the claims of the losing party would be rejected or canceled. 

The PTO declared Boston Scientific to be the “senior party,” i.e., Boston had an earlier invention date than the “junior party” Endosystems.  Endosystems did not dispute this point, and the PTO determined that Endosystems “has in essence conceded priority” to Boston. 

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RIM Defeats Motorola in Message Forwarding Patent Interference

Scott Daniels | May 4, 2011

The claims of RIM’s U.S. Patent 6,219,694 are for forwarding a message generated by a mobile client.  One of the independent claims recites configuring a “received message, prior to forwarding to the message recipient, such that the received message appears to the message recipient as if the received message originated at the sender’s email address associated with the host system.”  In other words, you can send an email from the pub, but the recipient believes that you are in the office.  Little surprise that such a valuable invention has twice survived reexamination.[1]

Motorola attempted to deal with RIM’s ‘694 patent by copying claims from that patent in a pending Motorola application, thereby provoking an interference between the patent and the application.  On Monday, however, the PTO Board of Appeals determined (here) that the Motorola specification did not contain written description support under 35 U.S.C. § 112, ¶ 1 for those copied claims, and therefore Motorola did not have standing to continue in the interference. 

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CAFC Finds HFC Patent Valid because Honeywell was not “Another Inventor” under § 102(g)(2)

Scott Daniels | October 15, 2010

This Wednesday the CAFC held in Solvay v. Honeywell that Honeywell’s activities in the United States did not constitute prior art under 35 U.S.C. § 102(g)(2) against Solvay’s U.S. Patent No. 6,730,817.  The CAFC therefore reversed the trial court’s summary judgment that the patent was rendered invalid by Honeywell’s activities.  Solvay’s ‘817 patent claims a method for making hydrofluorocarbons (HFCs) that are used in refrigeration and aerosol systems, as environmentally-friendly alternatives to chlorofluorocarbons (CFCs).

Paragraph (g) is the so-called “interference provision” of Section 102, but it also defines prior art that may be used in infringement actions, as in the present Solvay case.  Section 102(g)(2) provides in relevant part that a person is entitled to a patent if  “before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it” (emphasis added).  The issue for the CAFC was whether Honeywell was “another inventor,” i.e., had it invented the claimed process.  The CAFC said no.

Thankfully, the facts were not in dispute.
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Early August Developments

Scott Daniels | August 11, 2010

1.  Special Master Recommends Denying Stay

The Special Master Paul Beck has recommended in Grant Street v. (Civ. No. 2:09-cv-01407-DWA) that Judge Donnetta Ambrose deny Defendant’s motion to stay the case pending completion of reexamination of the patent-in-suit, U.S. Patent No. 7,523,063.  Special Master Beck recites the familiar three-part test for determining whether to grant a stay: whether there would be prejudice to the patentee, whether a stay would simplify the issues, and the stage of the litigation. 

What makes his recommendation interesting is his focus on the fact that the parties are “direct competitors in a two-supplier market.”  Accordingly, the patentee would face a potential loss of market share during the delay created by a stay, with a resulting injury that would be difficult to calculate or prove.  Thus, a stay could “cause irreparable injury [to the patentee] that is not remediable by money damages.”  

Special Master Beck concluded that the potential prejudice to the patentee trumped all other considerations and recommended denial of the Defendant’s stay motion.  
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Parties’ Claims Decimated in PRISTIQ® Interference

Scott Daniels | June 1, 2010

This past Friday the PTO Board entered judgment “in favor of” Wyeth in its interference with Sepracor.  In dispute were claims covering Wyeth’s anti-depression composition, PRISTIQ® having the active ingredient O-desmethylvenafaxine succinate.  The junior party Wyeth owns the two involved patents, U.S. Patent Nos. 6,673,838 and 7,291,347; the senior party Sepracor owns the three involved patent applications.
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Scott Daniels | May 10, 2010

In 2003, the PTO Board declared an interference between the claims of U.S. Patent No. 6,071,077 belonging to Rolls-Royce, and the claims of a United Technologies patent application.  The invention was a fan blade configuration used in turbofan jet engines.  United Technologies, having an earlier priority date, was named the senior party, and Rolls-Royce, with the later date, the junior party.

Rolls-Royce argued that there was no “interference-in-fact” because its claims were patentably distinguishable over the claims of the United Technologies patent.
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Geron and Novocell in Interference

Scott Daniels | December 16, 2009

The obvious focus of our Blog is reexamination practice. Our underlying belief, however, is that one must be flexible and follow the legal steps that are suitable for the individual facts of each case. In some cases, the correct approach is to seek reexamination, but in others, it may be to provoke an interference.

So it appears to be in the dispute between the stem cell companies, Geron and Novocell. Novocell owns U.S. Patent No. 7,510,876 which is entitled “Definitive Endoderm” and claims “endoderm cells that can differentiate into cells of the gut tube or organs derived therefrom.” Geron, however, believes that it was the first to invent this claimed technology.
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