Patent Interference No. 103,548
· Preliminary Motion 2 - under 37 CFR § 1.633(b) [sic § 1.633(c)(4)] 13 to redefine
the interfering subject matter by designating Lagrange patent claim 29 to not
correspond to Count 2, filed June 4, 1996 (paper no. 24) [LPM2].
· Preliminary Motion 314 - under 37 CFR § 1.633(c)(4) to redefine the interfering
subject matter by designating Lagrange reissue claims 1-21, 24-26 and 29 to not
correspond to the counts, filed March 31, 1997. (paper no. 61) [LPM3].
· Motion to suppress evidence - under 37 CFR § 1.656(h), filed February 2, 1998
(paper no. 95) [LMS].
Konrad15
The parties were also requested to comment, in their supplemental affidavit and/or briefs, "on the
relevance of [FR 2,008,797] in view of its disclosure that R can be hydrogen or a lower alkyl group and
that the benzene ring can contain hydroxyl groups" (paper no. 49, p. 24).
Finally, a rebuttal testimony period was set to permit filing of rebuttal affidavits and for cross-
examination (paper no. 49, p. 24).
In response to the Order Redeclaring the Interference, Lagrange moved under 37 CFR §
1.633(c)(4) to redefine the interfering subject matter by designating Lagrange reissue claims 1-21, 24-26
and 29 as not corresponding to the counts (LPM3).
LPM3 was filed on March 31, 1997, after the Decision on Preliminary and Other Motions. The
motion was supported with a fourth declaration of Jean Cotteret (Cotteret IV, filed March 31, 1997; see
paper no. 61 and LR 17-22) and a publication by Chavdarian [i.e., Chavdarian et al, "Oxidative and
Cardiovascular Studies on Natural and Synthetic Catecholamines", Journal of Medicinal Chemistry, 1978,
Vol. 21, No. 6, pages 548-54]. Konrad filed an opposition (Opposition 3, paper no. 69, filed May 2, 1997)
to the motion supported with a fourth Höffkes declaration (Höffkes IV; paper no. 70, filed May 2, 1997;
see KR 28-35)
13 Lagrange incorrectly moves under § 1.633(b) for judgment on the ground that there is no interference-
in-fact. According to the Rule, "A motion under this paragraph is proper only if ... no claim of a party which
corresponds to a count is identical to any claim of an opponent which corresponds to that count" [our
emphasis]. Lagrange moves only with respect to Patent claim 29. However, all of Lagrange's other Patent
claims still correspond to the counts. Under these circumstances, § 1.633(b) does not apply because the
interference involves claims of the Lagrange Patent which correspond to a count that are identical to
Konrad's claims corresponding to that count. We will presume Lagrange intended to move under §
1.633(c)(4) instead.
14 Lagrange previously filed another Preliminary Motion 3 (paper no. 25). To be consistent with parties’
records, Lagrange’s Preliminary Motion 3 [hereinafter LPM3] will refer to this and not the previous motion.
15 Konrad filed KPM5 on June 4, 1996, during the preliminary motion phase, and cited US Patent
5,011,500 (Grollier) in support thereof. After submitting a Notice of Filing a Reissue Application (Paper no.
35), Lagrange filed an opposition to KPM5 (Lagrange Opposition 1, paper no. 36, filed July 12, 1996),
supported by a second declaration of Jean Cotteret (Cotteret II, paper no. 35, filed July 8, 1996). Konrad
then filed a reply to the opposition (Konrad Reply 1, paper no. 42, filed August 2, 1996) relying on a
second declaration of Dr. Horst Höffkes (Hoffkes 2).
Oral arguments on preliminary motions were held on September 30, 1996. On October 1, 1996, a
Decision on Preliminary and Other Motions (paper no. 49) was rendered. After reviewing KPM5,
Lagrange's opposition and Konrad's reply, Cotteret II and Höffkes II, as well as the Grollier '500 reference,
a final decision on KPM5 was ordered deferred to final hearing (paper no. 49, p. 38).
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