Interference No. 104,733
Page No. 36
sua sponte set its own schedule for submitting motions to redefine the interfering
subject matter.
Lilly's failure to comply with the times set by the APJ undermines the APJ's
ability to secure a "just, speedy, and inexpensive" determination of this interference.
By failing to timely file its motions to redefine the interfering subject matter, Lilly has
avoided the difficult and complex question of what a proper count and claim
correspondence would be if this interference were to proceed. Further, if Lilly had
timely filed its "necessary and desirable" motions to redefine the interfering subject
matter, Lilly's motions may have provided additional evidence regarding the existence
of an interference-in-fact or lack thereof. Lilly instead chose a more limited approach
and is subject to the consequences of its choices.
4. The Panel Will Not Exercise Its Discretion Under Rule 641 to Review the
Patentability of UW Claim 1
Lilly has argued that the issue of UW's written descriptive support for UW claim 1
is presently before the Board. This is not the case. Neither Lilly nor UW has briefed
this particular issue. Moreover, as the panel has determined that there is no
interference-in-fact between UW and Lilly, no Rule 1.633(a) patentability motions will be
accepted from the parties. This is not to say that the panel has determined that UW
claim 1 is patentable, but rather it is a recognition that Lilly will not be afforded the
opportunity to submit unpatentability motions where there is no interference-in-fact.
Berman v. Housey, 2002 U.S. App. LEXIS 10256 at *24 (Fed. Cir. 2002)(Refusal by
Board to address issues of priority and patentability once it determined that there is no
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