Interference No. 104,733
Page No. 38
issue of Lilly's alleged work under § 102(g) should be resolved in an interference
proceeding. Lilly also argues that the failure to recognize an interference-in-fact under
the present circumstances leads to the "absurd, inequitable, and unlawful" result that
Lilly's practice of its own prior invention may be alleged to infringe UW's claims.
The existence or nonexistence of another remedy within the USPTO is not a
basis for continuing an interference where none exists. Should Lilly believe that an
actual controversy exists between the UW '529 patent and Lilly's activities, Lilly may file
a declaratory judgment action in district court.
ORDER
Upon consideration of the motions, it is:
ORDERED that UW Preliminary Motion 1 for no interference-in-fact is granted.
FURTHER ORDERED that there is no interference-in-fact between claims 1 and
3 of UW, U.S. Patent No. 5,302,529 and claims 1-82 and 84-90 of Lilly, U.S. Application
No. 09/185,663.
FURTHER ORDERED that Lilly Preliminary Motion 1 to designate an additional
patent claim is moot.
FURTHER ORDERED that Lilly Contingent Miscellaneous Motion 2 for leave to
belatedly file a preliminary motion is moot.
FURTHER ORDERED that if there is a settlement agreement, attention is
directed to 35 U.S.C. § 135(c) and 37 CFR § 1.661.
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