Interference No. 105,058
Schaenzer v. Knight
Unlike a civil litigation between two private parties, an interference proceeding is
initiated by the U.S. Patent and Trademark Office. It cannot be terminated at will by agreement
between the parties in a manner that provides no reasonable assurance that applicable patent laws
have been correctly applied. The parties have to demonstrate the legal soundness of the changes
they seek. For instance, if the claims of the parties are drawn to the same patentable invention,
the parties may not agree to "live with" or "tolerate" each other by allowing each to retain some
claims simply by agreeing to have certain claims re-designated as not corresponding to the count.
Here, the parties have settled the interference. Junior party filed no response to our show
cause order and appears ready to accept entry of adverse judgment. However, before accepting
adverse judgment, it desires to carve out its claims 3-9 from the effects of that adverse judgment
by designating them as not corresponding to the count. If that relief is granted, the junior party
will walk away with its claims 3-9 intact despite its having lost this interference. The senior
party agrees to that outcome. Hence, the parties have jointly moved to have junior party's claims
3-9 designated as not corresponding to the count.
In provoking this interference, senior party Knight had represented that claim 3 of
Schaenzer's involved patent should be designate as corresponding to the count. It was
represented by Knight that this claim does "not provide elements which would warrant a finding
of separate patentability" (Exhibit 2004, at 2). Also in provoking this interference, senior party
Knight represented that claim 4 of Schaenzer's involved patent should be designated as
corresponding to the count because the claim would have been obvious in view of U.S. Patent
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