Interference No. 104,733
Page No. 33
UW claim 1 must be construed as "limited to the specific allelic cIDNA sequence
disclosed in the UW '529 Patent, as is claim 3 of the UW '529 Patent" and that "claim 1
of the UW '529 Patent is essentially equivalent to claim 3 of the UW '529 Patent."
(Paper No. 27, p. 7 and p. 9 and Paper No. 30, p. 4). Alternatively, Lilly argues that it is
expected that UW will contend that claim 1 is generic and encompasses not only the
cIDNA sequence that UW discovered, but also the cIDNA sequence discovered by Lilly.
(See, Paper No. 27, p. 9). It is not necessary for us to determine whether UW claim 1
is as broad or as narrow as Lilly contends. There is no interference-in-fact under either
claim construction. If we construe UW claims 1 and 3 as "essentially equivalent," there
is no interference-in-fact as Lilly's corresponding claims do not teach or suggest the
cDNA of UW claim 3 and would likewise not teach or suggest an "essentially
equivalent" cIDNA of UW claim 1. Specifically, Lilly's corresponding claims do not teach
or suggest the particular number and location of the polymorphisms in the cIDNA of UW
claim 3 nor would they teach or suggest a such polymorphisms in a similarly construed
claim.
If we construe UW claim 1 to be a generic claim covering any cDNA sequence
that encodes human protein C, there is still no interference-in-fact. So construed, UW
claim 1 would encompass thousands of possible sequences. Given such a vast
number of possible sequences encompassed by a broadly construed. UW claim 1, there
would need to exist some suggestion or teaching in the prior art that guided one skilled
in the art to the specific species claimed by Lilly. See In re Baird, 16 F.3d 380, 29
USPQ2d 1550 (Fed. Cir. 1994)(Prior art teaching of "vast number" of possible diphenol
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