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Interference No. 104,833
Page No. 16
instead, Hazes compares the reissue claims with the count and concludes that since the reissue
claims are broader in scope than the count, then the claims should correspond to the count.
Hazes' argument is flawed. Original count 1 is Hazes involved claim 1. By comparing its
reissue claims to count I (Hazes claim 1), Hazes is in essence comparing one set of its own
claims with another set of its own claims. However, Hazes must compare its claims with Bries
claims in order to demonstrate that there is an interferencc-in-fact. Furthermore, that analysis is
a two way analysis. See, Eli Lilly v. Board of Regent of the Univ. of Wash., 334 F.3d 1264, 67
USPQ2d 1161 (Fed. Cir. 2003). Thus, Hazes must demonstrate that (1) at least one of Hazes'
reissue claims anticipates or renders obvious one of Bries' claims and (2) that the same Bries'
claim anticipates or renders obvious the same Hazes' claim. No such analysis was performed.
During oral argument, the panel expressed concern to 3M's counsel that no showing of an
interference-in-fact had been made in the Hazes preliminary motion to add the reissue application
(Paper 114 at 36-37). In response, counsel for 3M requested time to respond. A paper entitled
"3M'S RESPONSE TO THE PANEL'S INQUIRY" was filed (Paper 115). Thatpaperstates
that "3M does not and will not assert that any of the claims in Hazes's reissue application are
patentably distinct from any of the claims in Bries's application." Ordinarily such a statement
would not meet the requirements necessary to demonstrate that an interference-in-fact exists.
However, based on the specific facts of this case, including 3M's admission against interest5, and
in light of the language being omitted from Hazes original claims, the Hazes motion in
' 3M's counsel requested that the reissue application be added to ensure that if the
underlying Hazes patent lost on priority then the Hazes reissue would likewise be found
unpatentable. (Paper 114 at 23-26).
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