There are two counts in the interference. There is a presumption that count I and count 2
are separately patentable inventions. 37 CFR § 1.601 (f). Thus, when deter-mining whether any
one claim of Boutros interferes with any one claim of Lok, the moving party(ies) must
demonstrate that with respect to each separate count, the claims that correspond to the particular
count do not interfere. The test for no interference-in-fact is a one way norrobviousness test.
See, Eli Lilly v. Board of Regent of the Univ. of Wash., 334 F.3d 1264, 67 USPQ2d 1161 (Fed.
Cir. 2003).
Thus, with respect to count 1, the parties need demonstrate that (1) no one claim of
Boutros that corresponds to count I anticipates or renders obvious a claim of Lok that
corresponds to count 1 or (2) no one claim of Lok that corresponds to count I anticipates or
renders obvious a claim of Boutros that corresponds to count 1. The analysis is similar with
respect to count 2. Lok must demonstrate that (1) no one claim of Boutros that corresponds to
count 2 anticipates or renders obvious a claim of Lok that corresponds to count 2 or (2) no one
claim of Lok that corresponds to count 2 anticipates or renders obvious a claim of Boutros that
corresponds to count 2.
No interference-in-fact motion with respect to Count I
Boutros claims 29-31 corTespond to count 1. Lok claims 1-8, 10 and 13-15 correspond to
count 1. The parties compare Boutros claim 29 with Lok claims I and 13. Boutros claim 29 is
independent as are Lok claims I and 13. Boutros claim 29 and Lok claim 13 are identical.
These claims, however, recite a means plus function limitation. Claims with means plus firriction
limitations are to be interpreted under 35 U.S.C. 112, T 6. ln doing so, it is possible that identical
claims may not interfere. See 37 CFR § 1.633(b). Boutros and Lok argue that Lok claim 13 and
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Last modified: November 3, 2007