Glaxo claim designations:
Glaxo states that “[c]laim 1 of the ‘403 patent, claims 1 and 2 of the ‘404 patent, and
claims 1, 6, 8, and 9 of the ‘405 patent define the same patentable invention as Count 2 and
should correspond to the proposed Count.” Glaxo states that its “remaining claims” should not
be designated as corresponding to proposed Count 2 “for reasons set forth in GWI Preliminary
Motions 6-9.”
The Notice Declaring Interference prohibits incorporation by reference (Paper 1 at 9).
We have only considered arguments present in preliminary motion 5 in deciding whether the
“remaining” Glaxo claims should be designated as corresponding to Count 2. Glaxo has not
sufficiently explained why its “remaining” claims should not be designated as corresponding to
Count 2 in its preliminary motion 5. Accordingly, the portion of Glaxo preliminary motion 5
seeking to have claim 1 of the ‘403 patent, claims 1 and 2 of the ‘404 patent, and claims 1, 6, 8,
and 9 of the ‘405 patent as the only Glaxo claims designated as corresponding to Count 2 is
DENIED.
Nonetheless, since we are substituting Count 2 for Count 1, it is appropriate for us to
evaluate the Glaxo claims and determine which claims should correspond to Count 2.
In determining whether the disputed claims should be designated as corresponding to
Count 2, we look to see whether each disputed claim is the same patentable invention as Count
2. Therefore, we determine whether each disputed claim defines an invention that is anticipated
by or would have been obvious in view of proposed Count 2. 37 CFR § 1.601(n).
All the claims of the Glaxo patent were designated as corresponding to Count 1 in the
Notice Declaring Interference (Paper 1 at 49). The examiner’s attachment to the initial
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