University of Washington v. Eli Lilly & Co.

Informative decision only: persuasive authority, not binding precedent. When deciding a motion for no interference-in-fact, the Board compares the parties' corresponding claims and, applying 37 CFR § 1.601(n), treats each party's claimed subject matter as prior art to the other's to ask whether it anticipates or renders obvious the other's claims. If a party's claims, including a dominating genus claim, do not impede the grant of the opponent's claims, the claims are separate patentable inventions and no interference-in-fact exists. A "species anticipates dominating genus" one-way test does not by itself establish interference-in-fact. No prior precedent directly addressed this issue: the Board declined to rely on or address Winter v. Fujita, 53 USPQ2d 1234 (Bd. Pat. App. & Int. 1999), as unnecessary, and it rejected Lilly's reading of the comments to the rules and of Chiong v. Roland, 17 USPQ2d 1541 (Bd. Pat. App. & Int. 1990). A party seeking to prove no interference-in-fact has the framework to move under Rule 633(b): show the opponent's corresponding claims are patentably distinct, under both claim constructions where claim scope is disputed. The party asserting an interference must show that its opponent's claims actually impede its own, so it cannot rely on a species anticipating the genus, and it must file redefinition motions within the APJ's set times. The Board relied on Nitz v. Ehrenreich, Aelony v. Arni and Case v. CPC International, which the rule comments say the PTO will follow, and on Federal Circuit DNA-obviousness cases including In re Deuel and In re Bell. LEGAL TEST OR STANDARD: The test for no interference-in-fact is whether the parties claim separately patentable inventions, i.e., whether a party's claims are no impediment to granting the opponent's claims. Under Rule 601(n), invention A is separate from invention B when A is new (35 U.S.C. 102) and non-obvious (35 U.S.C. 103) in view of B, assuming B is prior art. The comparison starts from corresponding claims, with a rebuttable presumption that all claims designated to correspond to a count define the same patentable invention. A patentably distinct species is a separate patentable invention from its dominating genus. TRIGGERING FACTS: UW's patent claim 3 (species, a specific cDNA sequence) was the only corresponding claim, and Lilly moved to add genus claim 1. The Lilly and UW cDNA sequences differed at two nucleotides, which the parties agreed could not have been predicted from Lilly's nucleotide or amino acid sequence. Because the prior art did not guide one to the specific sequences, neither claim anticipated or rendered obvious the other, and this held under both a narrow and a broad construction of UW claim 1. Lilly's earlier statements to the examiner that UW's sequence was identical to Lilly's proved erroneous. KEY QUOTE: "The test for no interference-in-fact is whether or not the parties are claiming separately patentable inventions." (Paper 45, p. 27) PRIOR PRECEDENT AFFECTED: Follows Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976), Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977), and Case v. CPC International, Inc., 730 F.2d 745, 221 USPQ 196 (Fed. Cir. 1984), as directed by the comments at 49 Fed. Reg. 48416, 48421 (Dec. 12, 1984). Rejects Lilly's reading of Chiong v. Roland, 17 USPQ2d 1541 (Bd. Pat. App. & Int. 1990), and expressly does not address Winter v. Fujita, 53 USPQ2d 1234 (Bd. Pat. App. & Int. 1999). PRACTICE TIP: Do not rely on a one-way "species anticipates dominating genus" argument to show interference-in-fact. Instead, address patentable distinctness under Rule 601(n) in both directions and under each plausible claim construction. Also file any Rule 633(c), (d) or (h) redefinition motions within the times the APJ sets, and do not set your own schedule.