Interference No. 104,717 Paper 30
Laudano v. Dana-Farber Cancer Inst., Inc. Page 5
decision in the interference." In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989).
Ordinarily a party that loses an interference is estopped from seeking relief it could have
sought during the interference. 37 C.F.R. § 1.658(c). Hence, as a threshold matter, it is
necessary to establish that Laudano could not have sought the relief it requests by filing a
motion.
Adding a generic count
It might have been possible to grant the requested relief if there had actually been a
generic count. DFCI, however, had no claims corresponding to at least illustrative count 3.
While DFCI arguably has support for such claims, it is a patentee. Consequently, Laudano could
not have moved to have DFCI add claims corresponding to a proposed count 3. 37 C.F.R.
§ 1.633(c)(5)("requiring an opponent who is an applicant to add a claim and to designate the
claim to correspond to a count"); accord Green v. Rich Iron Co., 944 F.2d 852, 854, 20 USPQ2d
1075, 1076-77 (Fed. Cir. 1991) (patentee cannot be compelled to file a reissue application).
Consequently, Laudano could not have moved to add count 3 and cannot be estopped from any
action for failing to have so moved.
Designating the generic claims as not corresponding
The relief Laudano is requesting is essentially a judgment that its generic claims do not
correspond to any of the counts. The problem with this approach is that Laudano's generic
claims are necessarily anticipated by DFCI's claims corresponding to counts 4, 6, and 7.
37 C.F.R. § 1.637(c)(4)(ii) (designation is based on other claims that indisputably correspond to
the count); accord In re Deckler, 977 F.2d 1449, 1452, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992)
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