Interference No. 104,733
Page No. 2
1. Summary of the Decision
The issues presented in this interference are straightforward. University of
Washington ("UW") has requested a judgment of no interference-in-fact. As permitted
by the rules, Lilly has requested that, prior to determining the question of no
interference-in-fact, we designate an additional UW claim as corresponding to the
count.
The Federal Circuit has stated that no interference-in-fact means that there is no
interfering subject matter. Thus, no interference-in-fact means that the parties are
claiming different patentable inventions, an example of which occurs when the claimed
subject matter of a party's patent would not impede the granting of an applicant's
claims. As such, the issues raised by the parties are simply a question of whether or
not UW's patent claims would prevent the issuance of Lilly's claims.
There is a rebuttable presumption that each claim designated as corresponding
to a count defines the same patentable invention as all other claims designated as
corresponding to the count. Indeed, 37 CFR § 1.6010) states that:
An "interference-in-fact" exists when at least one claim of a party that is
designated to correspond to a count and at least one claim of an
opponent that is designated to correspond to the count define the same
patentable invention.
Accordingly, in analyzing the question of no interference-in-fact, we compare a party's
corresponding claims to an opponent's corresponding claims. Specifi cally, we presume
that the subject matter of a party's corresponding claims are "prior art" to an opponent's
corresponding claims in order to determine whether or not the parties invented the
same patentable invention. Where a party's corresponding claims are separately
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