interference No. 104,733
Page No. 37
interference-in-fact is supported by sound policy considerations).
During the course of an interference, if an APJ become aware of a reason why a
claim designated as corresponding to the count may not be patentable, the APJ has the
discretion to enter an order notifying the parties of the reasons and set a time for each
party to present its views. 37 CFR § 1.641. This interference was declared based, in
part, on Lilly's allegations that a nucleotide sequence encoding protein C deposited by
UW was identical to that of Lilly's. These allegations proved to be erroneous, albeit
inadvertently. Given the circumstances of this interference, the panel chooses not to
exercise its discretion under Rule 1.641 and explore the patentability or unpatentability
of UW claim 1.
5. Lilly Contingent Miscellaneous Motion 2 is Moot
Lilly filed a motion seeking leave to belatedly file a preliminary statement. (Lilly
Contingent Miscellaneous Motion 2, Paper No. 41, p. 1). Lilly's motion is contingent on
the determination that there is an interference-in-fact. As we have granted UW
Preliminary Motion 1 for no interference-in-fact, Lilly's miscellaneous motion is moot.
6. Additional Comments
Lilly has argued that they have no other remedy in the USPTO..(Paper No. 27,
p. 11). According to Lilly, a reexamination of UW's 529 patent is not available as Lilly's
'624 patent was cited during the prosecution of UW's patent and UW overcame this
rejection by filing a declaration under 37 CFR § 1.131. As such, Lilly concludes that the
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