separate patentable invention with respect to invention "B" when invention "A" is new
(35 U.S.C. 102) and non-obvious (35 U.S.C. 103) in view of invention "B" assuming
invention "B" is prior art with respect to invention "A".
The proper analysis in determining that there is an interference-in-fact between the
parties' claims is a two-way "same patentable invention" analysis. The claimed invention of
Party A is presumed to be prior art vis-a-vis Party B and vice versa. See Eli Lilly v, Regents of
the Univ. Wash., 334 F.3d 1264, 67 USPQ2d 1161 (Fed. Cir. 2003).
The proper analysis then in determining that there is no interference-in-fact between the
parties' claims is a one-way analysis. Thus, van Engelen need only demonstrate that (1) no one
claim of Lee anticipates or renders obvious a claim of van Engelen or (2) no one claim of van
Engelen anticipates or renders obvious a claim of Lee. The moving party should discuss the
relevant prior art and explain why the prior art does not teach or suggest the modifications of the
one party's claims (e.g., van Engelen's claims) in view of the other party's claims (e.g., Lee's
claims).
Van Engelen makes no meaningful attempt to explain why Lee's claims are separately
patentable in view of van Engelen's claims or vise versa. It is not enough to point out differences
and conclude that there is no interference-in-fact. Nor is it meaningful to argue that one party's
specification is separately patentable over the other parties specification, or that one party's
claims are separately patentable over the opponents specification. The appropriate comparison is
between the claims and not the disclosures. For all of these reasons, van Engelen has failed to
sufficiently demonstrate that there is no interference-in-fact. Van Engelen preliminary motions
1-3 are denied.
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