Lee v. McIntyre

When a party moves under 37 CFR § 1.633(c)(1) to substitute a narrower count, the Board will not apply a per se rule that the count must be as broad as the broadest patentable claim designated as corresponding to it. Under Rule 606 the count must be at least as broad as such claims only when the interference is initially declared. Afterward the count may be narrowed to exclude patentable subject matter within a corresponding claim if that claim is directed to more than one separate patentable invention. The movant must explain under Rule 637(c) "why the interfering subject matter should be redefined." The Board declined to follow Heymes v. Takaya, 6 USPQ2d 1448 (Bd. Pat. App. & Int. 1988), which had treated a party as entitled to a count broad enough to cover its broadest patentable corresponding claim, and said Heymes is not binding precedent. An opposing party seeking a narrower count cannot rest on a bare showing that Rule 637(c)(1) items (i), (iv) and (v) are satisfied. It must explain why the count should be redefined, and on the Board's analysis that means showing the corresponding claim defines more than one separate patentable invention. A patentee or opposing party cannot rely on a right to a count as broad as its broadest claim. It must explain why the count should not be narrowed, and the Board noted that a patentee might try to recoup excluded subject matter by reissue. The Board relied on Case v. CPC International, Inc., 730 F.2d 745 (Fed. Cir. 1984) and Squires v. Corbett, 560 F.2d 424 (CCPA 1977) for the point that the count determines the scope of admissible priority evidence. It also relied on Godtfredsen v. Banner, 598 F.2d 589 (CCPA 1979), reproducing a Commissioner's decision. As to the deadline discussion, it cited Key Pharmaceuticals and Hockerson-Halberstadt only on a "compare" basis. LEGAL TEST OR STANDARD: A motion to substitute a count under 37 CFR § 1.633(c)(1) must satisfy Rule 637(c)(1): (i) propose each count to be substituted, (iv) designate the claims of any patent involved that define the same patentable invention as each proposed count, and (v) show that each proposed count defines a separate patentable invention from every other count proposed to remain. The motion must also, under Rule 637(c), explain why the interfering subject matter should be redefined. Because a single patent claim is presumed not to contain separate patentable inventions, the count should be narrowed only if the movant establishes that the claim is directed to more than one separate patentable invention (37 CFR § 1.601(n)). TRIGGERING FACTS: The interference was declared with Count 1 covering the broadest Lee patent claim and McIntyre application claim. After declaration, McIntyre moved to substitute proposed Count 2, identical to McIntyre claim 21, and offered no explanation of why the count should be narrower than the Lee claim designated as corresponding. Lee opposed by arguing the count must encompass the broadest corresponding patentable claim of each party, relying on Heymes, and also did not address why the count should not be redefined. KEY QUOTE: "The devil is in the details and it should be manifest to all that there is no per se rule that the count ultimately must be as broad as the broadest patent claim designated as corresponding to the count." (Paper 29, p. 11) PRIOR PRECEDENT AFFECTED: The Board disagreed with and declined to follow Heymes v. Takaya, 6 USPQ2d 1448 (Bd. Pat. App. & Int. 1988), noting it is not binding precedent. It found Heymes inconsistent with the Commissioner's decision reproduced in Godtfredsen v. Banner, 598 F.2d 589, 202 USPQ 7 (CCPA 1979). It held that Theeuwes v. Bogentoft, 2 USPQ2d 1378 (Comm'r Pat. 1986) and Davis v. Uke, 27 USPQ2d 1180 (Comm'r Pat. & Tm. 1993) are not to the contrary. PRACTICE TIP: When moving to substitute or narrow a count, do not just recite compliance with Rule 637(c)(1). Expressly explain why the count should be redefined, and show that the corresponding claim covers more than one separate patentable invention. When opposing, address that question directly and do not rely on the Heymes principle that a count must be as broad as the broadest patentable claim. Also do not treat settlement talks as excusing deadlines such as the preliminary statement, since the Board warned it may not be so charitable in the future.