Livak also relies on Schulze v. Green, 136 F.3d 786, 45
USPQ2d 1769 (Fed. Cir. 1998). Schulze involved an interference
between (1) applicant Schulze and (2) patentee Green. All of
applicant Schulze's claims and all of patentee Green's claims
were designated as corresponding to the count. Upon opening of
preliminary statements in the interference, it became manifest
that patentee Green could not prevail on priority. Applicant
Schulze attempted to correct inventorship in the interference.
37 CFR § 1.634. Patentee Green filed a preliminary motion for
judgment based on alleged unpatentability under 35 U.S.C.
§ 102(f). Ultimately, the board declined to decide whether the
inventorship of the Schulze application was correct
notwithstanding the fact that the issue had been fairly placed in
issue. Instead, the board entered a judgment against Schulze.
Schulze appealed contending that it was entitled to pursue its
attempt to correct inventorship after ex parte proceedings
resumed. Patentee Green disagreed and so did the Federal
Circuit, holding that the issue of inventorship should be
considered inter partes.
The Federal Circuit observed, citing the Manual of Patent
Examining Procedure (MPEP), that the USPTO had implemented the
intent of Congress in amending § 135(a) by noting that "[T]he
object of the interference will be to resolve all controversies
as to all interfering subject matter defined by one or more
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