DECISION ON YAMADA’S PRELIMINARY MOTION AND FINAL JUDGMENT
A. Introduction
This interference is between Patent 5,189,009 issued to Yurek et al. and Yamada et al’s
application 08/320,785. The declaration accorded Yurek an earliest effective filing date of March
27, 1987. Yamada was accorded an earliest effective filing date of March 13, 1987, making
Yamada the senior party. Paper 1, pp. 3-4. Preliminary statements and preliminary motions were
due June 8, 2001. Paper 25, p. 7. No preliminary statement or preliminary motions were filed by
Yurek. In a telephone conversation with paralegal specialist Sonja Despertt on June 14, 2001,
counsel for Yurek stated that no preliminary statement or any other papers would be filed.
Ordinarily this circumstance would result in an immediate judgment on priority in favor of Yamada
because Yurek would be restricted to its effective filing date ( 37 CFR § 1.629(c)) which is
subsequent to Yamada’s date. However, Yamada has filed a preliminary motion asserting that there
is no interference-in-fact between any of Yurek’s or Yamada’s claim. This motion raises a
threshold issue challenging the existence of this interference. Accordingly, before we may issue a
judgment we must decide Yamada’s motion.
B. Yamada’s Preliminary Motion of no interference-in-fact
Yamada has filed a preliminary motion asserting that no interference-in-fact exists between
any of the parties respective claims. Notwithstanding that Yurek does not appear to oppose, we
deny the motion.
An interference-in-fact exists when at least one claim of a party and one claim of an
opponent are directed to the same patentable invention. A party’s claim is directed to the same
patentable invention as an opponent’s claim if it is anticipated or obvious from the opponent’s claim
assuming the opponent’s claim to be prior art. 37 CFR § 1.601(n). The test for interference-in-fact
is a two- way test. Winter v. Fujita, 53 USPQ2d 1234, 1243 (Bd. Pat. App. & Int. 1999). An
interference-in-fact exists if a claim of a party and a claim of the opponent satisfy the two-way test.
On the other hand, for a party to show no interference-in-fact, patentable distinctness need only be
shown one way. As with all preliminary motions, Yamada has the burden of proof. 37 CFR §
1.637(a). In order to meet this burden Yamada must demonstrate that an interference-in-fact does
not exist between any of Yamada’s and all of Yurek’s claims.
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