Interference No. 104,733
Page No. 13
UW has filed a preliminary motion seeking a judgment of no interference-in-fact
based on the differences between the sequence of UW claim 3 and the sequences
recited in Lilly's claims. (UW Preliminary Motion 1, Paper No. 17, p. 1). In response to
UW's motion, Lilly filed a preliminary motion requesting that the interfering subject
matter be redefined to have UW claim 1 designated as corresponding to Count 1. (Lilly
Preliminary Motion 1, Paper No. 27, p. 1).2
1 . What is Required for a Determination of "No Interference-In-Fact"1
Both UW and Lilly agree that there is an interference-in-fact when two parties are
claiming the same patentable subject matter. The parties, however, disagree as to the
test for determining whether the parties claims define the same patentable subject
matter.
While 35 U.S.C. § 135(a) sets forth the requirements for declaring an
interference, the statute fails to explicitly state the requirements for determining whether
there is no interference-in-fact once an interference has been declared. To aid us in
our understanding, we look to the United States Patent & Trademark Office's
("USPTO") rules regarding no interference-in-fact. Yet, as the comments to the rules
specifically state that USPTO would continue to follow the decisions rendered in Case
Rule 633(i) allows a party to respond to a motion for no interference in fact by
filing, among other things, a motion under Rule 633(c) to redefine the interfering subject
matter.
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