Interference No. 104,681
Spears V. Holland
In the alternative, we reject party Spears' explanation on
why the same prior art applicable to render Holland's claims
unpatentable would not render Spears' own claims unpatentable.
The only argument advanced by Spears appears in section D of the
preliminary motion. Party Spears reads certain limitations from
the specification into the claims on the ground that:
It is axiomatic that a claim should be interpreted to
preserve, rather than defeat, its validity. ACS Hosp.
SVs., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 U.S.P.Q. (BNA) 929, 932 (Fed. Cir. 1984). Thus,
Spears' Claim 3 must be interpreted to such that its
,reading" step is one capable of handling film recorded
in a non-anamorphic format and not be limited only to
film recorded in an anamorphic format as is the case
with Senior Party's claims 21 and 22.
Spears' position is misplaced. The idea that where possible,
claims should be construed to preserve their validity, is a
principle applied to issued patents in a non-USPTO proceeding,
most frequently during an infringement suit by the patentee. it
is inapplicable to proceedings in the USPTO. Before the USPTO,
application and patent claims are treated alike. There is no
presumption of validity for an issued patent in an interference.
Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989),
Lamont v. Berquer, 7 USPQ2d 1580, 1582 (BPAI 1988); there is no
presumption of validity for a patent claim in a reexamination
proceeding, In re Etter, 756 F.2d 852, 225,USPQ 1 (Fed. Cir.
1985); there also is no presumption of validity for a patent
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