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
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).
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