In addition, neither party has filed a motion asserting that no interference-in-fact exists between the
parties' involved claims.
All of Strelchenko's involved claims were made afterAugust 31,2000, more than ayear after
Stice 577 issued on August 31, 1999.' Thus, applying the express language of 35 U.S.C.
§ 135(b)(1), Strelchenko's Claims 57-58, 61-63, 69-88, 106, 112-115 and 118 would appear to be
barred. However, under thejurisprudence interpreting § 135(b), Strelchenko's claims are not barred
if Strelchenko had on file at least one claim which was directed to the same or substantially same
subject matter as claimed by the patentee prior to the critical date. See, e.g., Corbett v. Chisholm,
568 F.2d 759,759-60,196 USPQ 337,338 (CCPA 1977) ("Theissue, therefore, is whether the board
was correct in holding that Corbett was not claiming subject matter substantially the same as that
covered by the copied claims prior to January 19, 1972, i.e., within the year after Chisholm's patent
issued"). We focus, therefore, on the claims Strelchenko had pending prior to the critical date of
August 31, 2000. Strelchenko specifically relies on three such claims: cancelled claim 48, an earlier
version of involved claim 106 and cancelled claim 107. Paper 50, p. 18. If Strelchenko's precriti6l
date claims include all the material limitations of Stice's' patent claims, then Strelchenko is entitled
to rely on the earlier filing date for the purpose of the § 135(b)(1) analysis. In re Berger 279 F.3d
975, 982, 61 USPQ2d 1523, 1527 (Fed. Cir. 2002). A limitation is material if it is necessary to
patentability. Corbett, 568 F.2d at 765, 196 USPQ at 343.
The Stice 577 claims and Strelchenko's precritical date claims are directed to cloning
processes including the step of inserting a specified donor cell or the nucleus of the donor cell into
an enucleated oocyte. In the Stice 577 claims the donor cell is a "proliferating somatic cell which
has been expanded in culture." In Strelchenko's precritical date claims the donor cell is a "totipotent
cell." Thus, Slice's Claim I provides:
9 Strelchenko's involved claims were made prior to the issue date of the Stice 041 and 969 Patents.
Thus only Stice 577 is relevant to this motion.
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