Interference No. 104,717 Paper 30
Laudano v. Dana-Farber Cancer Inst., Inc. Page 4
[8] According to the Joint Request, Laudano should be entitled to its claims 38-43, 47-57, 60-62,
and 67-69 (with respect to illustrative count 3) and claims 40, 41, 54, 55, 59, 68 and 69 (with
respect to illustrative count 5) (Paper 29 at 2).2
DISCUSSION
The requested relief is not possible
The fundamental problem with the approach the parties have proposed is that the generic
counts, illustrative counts 3 and 5, are not really counts at all. A count defines the scope of
proofs admissible to prove priority for the interfering subject matter. Only Laudano has claims
corresponding to illustrative counts 3 and 5, hence there is no real interference for the subject
matter of the illustrative counts. The Board cannot grant judgment with regard to counts that are
not really counts.
What the Board can do, based on the representations of the parties, is grant judgment
against Laudano on the actual counts, counts 4, 6, and 7. There is no way to sugarcoat this
outcome: Laudano has lost this interference.3 This does not, however, mean that Laudano
cannot achieve its desired outcome in further prosecution. "A losing party to an interference is
entitled to claim subject matter other than that of the interference count, provided the
requirements of patentability are met, and subject to those constraints that flow from the adverse
2 Although we need not decide the issue for the purposes of this judgment, only Laudano claims 47-51, 60, 62,
and 63 appear to be significantly broader than counts 4, 6, and 7.
3 It is long established that no one "wins" an interference. Had there been a generic count, the proofs Laudano
submitted would only establish that DFCI is not entitled to a generic claim. It would not have established that Laudano
was entitled to such a claim. In re Kyrides, 159 F.2d 1019, 1022, 73 USPQ 61, 63 (CCPA 1947) (a junior party
prevailing on a generic count with proofs to a single species is nevertheless properly rejected as anticipated by senior
party's patent disclosing different species). Hence, this judgment does not create the rejection that Laudano will likely
face in further prosecution and could not have avoided it even if we could grant the relief sought.
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