Yurek v. Yamada

Informative decision only: persuasive authority, not binding precedent. An interference-in-fact exists when at least one claim of a party and one claim of an opponent are directed to the same patentable invention, meaning each is anticipated or obvious from the other's claim taken as prior art (37 CFR § 1.601(n)) under a two-way test. A movant claiming no interference-in-fact bears the burden under 37 CFR § 1.637(a) and must show patentable distinctness between any of its claims and all of the opponent's claims, but need show it in only one direction. The Board must construe the opponent's claims in light of the specification, and where the specification gives a term a special meaning, that meaning can defeat the movant's broad construction even if the opponent does not oppose. No prior precedent directly addressed this issue in the text; the decision applies the two-way test of Winter v. Fujita, 53 USPQ2d 1234, 1243 (Bd. Pat. App. & Int. 1999). For the party moving for no interference-in-fact, the motion is not won by default: a broad construction of the opponent's claims backed by expert testimony fails if the specification narrows the claim terms, and the Board will discount testimony that ignores the written description. For the opposing party, here Yurek, the motion was denied even though Yurek did not oppose, so the Board independently tests the movant's showing. The Board relied on Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996), for reading the specification to determine whether the patentee gave claim terms a particular meaning. LEGAL TEST OR STANDARD: An interference-in-fact exists when at least one claim of a party and one claim of an opponent are directed to the same patentable invention. A claim is directed to the same patentable invention if it is anticipated or obvious from the opponent's claim assuming the opponent's claim to be prior art (37 CFR § 1.601(n)). The test is two-way, so an interference-in-fact exists if the claims satisfy it in both directions, and no interference-in-fact exists if it fails in either direction. The movant has the burden of proof (37 CFR § 1.637(a)) and must show no interference-in-fact between any of its claims and all of the opponent's claims. TRIGGERING FACTS: Yurek did not file a preliminary statement or any preliminary motions. Yamada moved for no interference-in-fact, relying on a broad construction of Yurek's claim 1 ("intimate contact" reaching any composition with no separation between the phases) supported by expert testimony. The Board construed Yurek's claims using the specification's description of a composite, its examples, and its express definition of noble metal. It then compared Yurek's claim 10 with Yamada's claim 55, each as prior art against the other, and found anticipation both ways. KEY QUOTE: "The test for interference-in-fact is a two- way test." (Paper 46, p. 2) PRIOR PRECEDENT AFFECTED: Follows Winter v. Fujita, 53 USPQ2d 1234, 1243 (Bd. Pat. App. & Int. 1999), for the two-way test. No prior Board precedential or informative decision is modified or superseded. PRACTICE TIP: Before moving for no interference-in-fact, construe the opponent's claims against its specification, examples, and any express definitions rather than relying on a broad reading and expert opinion. The motion will fail if the specification gives the claim terms a narrower special meaning and the claims anticipate each other in both directions.