arguments which appear to have been primarily raised by Shiokawa in its Opposition 1 and not in its
Corrected Preliminary Motion 1. 18
1. Shiokawa Mischaracterizes the Decision in Fujikawa
Shiokawa attempts to distinguish the case law relied upon by Maienfisch. In particular,
Shiokawa argues that:
[I]n the opinions cited by Maienfisch, there is no indication that the party for which
benefit was denied had contested whether the count defined a separate patentable
invention from the invention that it had disclosed. That is, in contrast to Shiokawa
Motion No. 5, no motion to substitute a broader count for the original count of the
interference was filed. Thus, there is an element of estoppel in all of those opinions.
The rationale for estoppel is explicitly stated in an opinion that Maienfisch did not cite,
but which is the foundation for the interference opinions that Maienfisch did cite. That
opinion is Bigham v. Godfredsen, 857 F.2d 1415, 8 USPQ2d 1266 (Fed. Cir. 1988).
(Paper No. 81, Shiokawa Opposition 1, p. 7, footnote omitted). After discussing the facts and holding
of Bigham, Shiokawa makes the following statement regarding the decision in Fujikawa:
Similarly, in Fujikawa v. Wattanasin, 93 F.3d 1559, 39 USPQ2d 1895 (Fed. Cir.
1996), Wattanasin sought to substitute for the original broad count a narrow count
reciting subject matter that it did not adequately describe. 93 F.3d at 1569-70, 39
USPQ2d at 1904-05.
(Paper No. 81, p. 8).
The “element of estoppel” discussed in Bigham plays no part in our understanding of the
Fujikawa decision which is relied upon by Maienfisch. Specifically, the decision in Fujikawa did not
involve a party asserting contradictory conclusions of law, i.e., that specific compounds form both the
18We note that Shiokawa Reply 1 and Shiokawa Opposition 1 and the arguments contained
therein have been fully considered but do not alter our denial of Shiokawa’s Corrected Preliminary
Motion 1.
47
Page: Previous 42 43 44 45 46 47 48 49 50 51 52 53 54 55 56 Next
Last modified: November 3, 2007