Noelle v. Lederman

Informative decision only: persuasive authority, not binding precedent. The question of no interference-in-fact is a one-way distinctiveness test, so a movant prevails by showing either that its claims are not anticipated or rendered obvious by the opponent's corresponding claims, or that the opponent's corresponding claims are not anticipated or rendered obvious by the movant's claims. In applying that test, the parties' specifications are not prior art and may be used only as a dictionary for claim terms or for admissions against interest regarding prior art. No prior Board precedent is named as directly addressing this issue; the decision grounds the one-way test in Example 20 of the Notice of Final Rule, Patent Interference Proceedings, 49 Fed. Reg. 48416, 48424 (Dec. 12, 1984), and in 37 CFR 1.601(j) and (n). For the party arguing that an interference-in-fact exists (here Noelle), it must show obviousness in a single direction, with both motivation and a reasonable expectation of success proven by prior art and not by the parties' own disclosures. For the party seeking termination (here Lederman), it need show non-obviousness in only one direction, though the Board here found it in both, and a showing of no reasonable expectation of success defeats an obviousness theory even where motivation is conceded. The Board relied on In re Vaeck and In re Dow Chem. for the two obviousness factors, on Brown & Williamson, In re Longi and In re Kotzab for the reasonable-expectation standard, and distinguished In re Wands and cited Amgen v. Chugai on hindsight. LEGAL TEST OR STANDARD: Whether there is no interference-in-fact is a one-way distinctiveness test. The movant need only demonstrate that: (i) its claims are not anticipated or rendered obvious by the opponent's remaining claims; or (ii) the opponent's remaining claims are not anticipated or rendered obvious by the movant's claims. Obviousness under 103 requires (i) whether the prior art would have suggested to those of ordinary skill that they should make the claimed subject matter; and (ii) whether the prior art would also have revealed a reasonable expectation of success. Absolute predictability is not required. TRIGGERING FACTS: A motion for judgment of no interference-in-fact where parties' claims correspond to a single count with mouse, human and genus embodiments. The genus and human claims of Noelle had been held unpatentable, leaving Lederman's human claims against Noelle's mouse claims. Anticipation was conceded absent, and motivation to obtain the other antibody was agreed. The dispute was reasonable expectation of success, and Noelle relied heavily on the parties' own specifications as showing it. KEY QUOTE: "The question of whether there is no interference-in-fact is a one-way distinctiveness test." (Paper No. 135, p. 9) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Example 20 of the Notice of Final Rule, Patent Interference Proceedings, 49 Fed. Reg. 48416, 48424 (Dec. 12, 1984), 37 CFR 1.601(j) and 1.601(n), and distinguished In re Wands, 858 F.2d 731 (Fed. Cir. 1988), because the antigen there was publicly available. PRACTICE TIP: When opposing a no-interference-in-fact motion, do not rely on the parties' specifications as evidence of enablement or expectation of success; build the obviousness showing, including reasonable expectation of success, from true prior art or admissions, and when moving, aim for a showing of non-obviousness in whichever direction is strongest.