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(1) stationary part of the measuring system that is fastened to the second frame and (2) stationary
part of the drive unit that is fastened to the machine frame (motion 2 at 17 and motion 3 at 19).
Van Engelen, in interpreting the nearly identical involved claims, proposes to import limitations
into the respective parties' claims. The specific structure that van Engelen imports from the
respective specifications is not recited in the parties' claims. For example, Lee claim 2 recites a
relationship between two frames - that the frames are dynamically isolated, and not a specific
structure, as further discussed infra.
In any event, van Engelen fails to sufficiently demonstrate that even if the respective
parties' claims require the structure van Engelen urges that they do, that there is no interference
in-fact. Van Engelen argues that "assuming that the '763 application is prior art to the '105
patent, the disclosure in the '763 application does not anticipate or render obvious van Engelen's
'105 patent. Likewise, the '105 patent does not anticipate or render obvious the properly
construed claims of the '763 application" (motions I and 2 at 17, motion 3 at 19). Van
Engelen's conclusory statement falls far short from providing a detailed analysis required to
demonstrate that there is no interference-in-fact.
Van Engelen must demonstrate that no one claim of Lee claims the same patentable
invention as any one claim of van Engelen, or that no one claim of van Engelen claims the same
patentable invention as any one claim of Lee.
The definition of "same patentable invention" is set out in 37 CFR § 1.601 (n) and is as
follows:
Invention "A" is the same patentable invention as an invention "B" when invention "A"
is the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of invention "B"
assuming invention "B" is prior art with respect to invention "A". Invention "A" is a
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