Strelchenko v. University of Massachusetts

Informative decision only: persuasive authority, not binding precedent. When all of an applicant's involved claims were made more than a year after the opposing patent issued, 35 U.S.C. § 135(b)(1) bars them unless a claim the applicant had on file before the critical date was directed to the same or substantially the same subject matter, meaning it included all the material limitations of the patentee's claims. A limitation is material if it is necessary to patentability, and the Board determines this from the patentee's prosecution history and Jepson claim format and then construes both sides' claim terms by ordinary meaning and the written descriptions. Where the barred claims are all the applicant's involved claims, the Board may terminate the interference by judgment against the applicant without reaching other preliminary motions. No prior Board precedent is named as being modified. The decision applies the Corbett v. Chisholm line and In re Berger on the pre-critical-date claim inquiry. For the party relying on a patent, here Stice, a § 135(b)(1) motion can end the interference outright, and the Board shows how to prove materiality from the prosecution history that produced the allowance, and from Jepson format. For the applicant, here Strelchenko, any claim made after the critical date is barred unless a pre-critical-date claim contained every material limitation. Calling a term the same in argument will not work if the ordinary meaning and the applicant's own specification say otherwise, and expert testimony inconsistent with those sources was not credited. The Board relied on Corbett v. Chisholm, 568 F.2d 759 (CCPA 1977), In re Berger, 279 F.3d 975 (Fed. Cir. 2002), and Berman v. Housey, 291 F.3d 1345 (Fed. Cir. 2002), for terminating the interference. LEGAL TEST OR STANDARD: Claims made more than a year after the patent issued are barred under § 135(b)(1) unless the applicant had on file, before the critical date, at least one claim directed to the same or substantially the same subject matter as the patentee's claims. The pre-critical-date claims must include all the material limitations of the patent claims. A limitation is material if it is necessary to patentability. Materiality was shown by the allowance history and Jepson format. Claim terms were then construed by ordinary meaning (dictionaries) and the written description, with a heavy presumption of ordinary meaning absent redefinition or disavowal. TRIGGERING FACTS: Stice 577 issued August 31, 1999, so the critical date was August 31, 2000. All of Strelchenko's involved claims were made on or after September 29, 2000. Strelchenko relied on pre-critical-date claims 48, 106 and 107, which required a totipotent donor cell. Stice's claims required a proliferating somatic cell expanded in culture, a limitation added by examiner's amendment after rejections and set out as the sole improvement in Jepson claims. Strelchenko's own specification distinguished totipotent cells from differentiated and somatic cells. Strelchenko had not added a non-barred claim under 37 CFR § 1.633(i). KEY QUOTE: "Thus, we hold that the limitation in Stice’s claims requiring “a proliferating somatic cell that has been expanded in culture” was necessary to the patentability of Stice’s claims and is a material limitation." (Paper 88, p. 19) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The decision follows Corbett v. Chisholm, 568 F.2d 759, 196 USPQ 337 (CCPA 1977), In re Berger, 279 F.3d 975, 61 USPQ2d 1523 (Fed. Cir. 2002), and Berman v. Housey, 291 F.3d 1345, 63 USPQ2d 1023 (Fed. Cir. 2002). PRACTICE TIP: Before relying on a pre-critical-date claim to avoid § 135(b)(1), check that it contains every limitation the patentee added to obtain allowance. Build the record on how your own specification defines the key terms. Do not argue a meaning, or offer expert testimony, that conflicts with the ordinary meaning or your own written description. If every claim is at risk, file a § 1.633(i) motion to add a claim that is not barred.