Winter v. Fujita

When an interference-in-fact issue is raised by a preliminary motion under 37 CFR § 1.633(b), the Board must apply a two-way patentability analysis. Each party's claimed invention is presumed prior art to the other, and the claims are the same patentable invention if each anticipates or renders obvious the other. As to replies, the Board may deny a motion that fails to make a prima facie case without considering any opposition or reply. From publication of the opinion it will strictly enforce reply practice, and it will return any reply that does not use the ¶ 26(c) format of the Notice Declaring Interference. The text identifies no prior Board precedent on the two-way analysis, which it describes as implementing 37 CFR § 1.601(j) and (n) and CCPA holdings. On replies, it escalates warnings the Trial Section had already given in Nau v. Ohuchida and announces strict enforcement going forward. For a party contending there is no interference-in-fact, it bears the burden by a preponderance, must show both directions of non-obviousness in the motion itself, and cannot cure gaps in a reply. For the opponent, the Board may deny a deficient motion without reading its opposition, and the opponent is protected against first-time arguments in a reply. The Board relied on Aelony v. Arni (CCPA 1977) for the two-way analysis and on Bruning v. Hirose (Fed. Cir. 1998) for the preponderance burden, and it analogized to Key Pharmaceuticals v. Hercon Laboratories Corp. and Hockerson-Halberstadt v. Converse Inc. on waiver-type conduct. LEGAL TEST OR STANDARD: Interference-in-fact exists when at least one claim of a party designated to correspond to a count and at least one claim of an opponent designated to correspond to the count define the same patentable invention (37 CFR § 1.601(j)). Invention A is the same patentable invention as B when A is the same as (35 U.S.C. 102) or obvious (35 U.S.C. 103) in view of B, assuming B is prior art to A (37 CFR § 1.601(n)). The analysis runs both ways: A must anticipate or render obvious B, and B must anticipate or render obvious A. The movant must prove no interference-in-fact by a preponderance (37 CFR § 1.637(a)). On replies, the Board may deny a motion that makes no prima facie case without considering any opposition or reply. TRIGGERING FACTS: A party files a preliminary motion for judgment under 37 CFR § 1.633(b) alleging no interference-in-fact, and the opponent's claims are asserted to be separate patentable inventions. Here Winter and Spaleck claimed metallocene compounds and argued that Fujita's catalyst claim 8 was a separate invention. The Board found the motions made no prima facie case, noted numerous new arguments in the replies, and considered the replies only on the meaning of Fujita claim 8 and only to the extent they relied on admissible evidence. The strict enforcement warning applies from the date the opinion is published on the PTO Web Page or elsewhere. KEY QUOTE: "The Trial Section feels that one more warning is in order to all concerned that we will strictly enforce the reply brief practice as of the date this opinion is published on the PTO Web Page or elsewhere." (Paper 73, p. 55) PRIOR PRECEDENT AFFECTED: Follows and quotes Part 2-a. of Nau v. Ohuchida (opinion at http//:www.uspto.gov/web/offices/dcom/bpai/its/104258.pdf) on improper replies, and escalates its warning. Follows Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977), for the two-way analysis, and compares Bruning v. Hirose, 161 F.3d 681, 48 USPQ2d 1934 (Fed. Cir. 1998), on the burden of proof. No prior Board precedential decision on the two-way analysis is named. PRACTICE TIP: Put the entire prima facie case in the opening preliminary motion, showing patentable distinctness in both directions under §§ 102 and 103, and keep the reply strictly within the ¶ 26(c) format and the scope of the opposition, because the Board may deny the motion without reading the opposition or reply and may return a noncompliant reply.