Federal Circuit Holds Standard for Claim Interpretation for Purpose of Interference Is Distinct For Claim Interpretation for Purposes of 35 U.S.C. §§102 & 112

In Agilent Tech., Inc. v. Affymetrix, Inc., Civ. Case No. 2008-1466 (Fed. Cir. June 4, 2009), Agilent owns Schembri patent 6,513,968 (“Schembri”) issued on February 4, 2003 and claimed priority to an application filed August 21, 1998.  Affymetrix believed it had earlier invented the claimed methods of the Schembri patent and copied the claims of the Schembri patent into its Besemer patent application 10/619,244 (“Besemer”) to provoke an interference.  The Besemer application claimed priority through a string of continuations to a patent application filed June 7, 1995, which made Affymetrix the senior party to the interference under 37 C.F.R 2.96. The disputed claims in the Besemer application and the Schembri patent deal with “microarray hybridization,” which is a technique for performing multiple genetic analyses on a small fluid sample.  Specifically, claim 20 of the Schembri patent and claim 66 of the Besemer application relate to a method for mixing a fluid sample during hybridization, by providing and moving a bubble

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Federal Circuit Affirms that the Party Seeking the Benefit of Priority Bears the Burden of Proof That Claims Are Entitled to Priority

In PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299; 86 U.S.P.Q.2D 1385 (Fed. Cir. 2008) (non-precedential), PowerOasis possessed two patents with the purpose of providing a “vending machine” that enables a customer to connect a laptop to a communications channel.  Id. at 2.  PowerOasis brought suit in the District Court for the District of New Hampshire alleging that T-Mobile’s internet “Hot-Spot” system infringed its patent. PowerOasis’ original application in 1997 described a “vending machine” which would allow a consumer to connect his laptop to a telecommunications network.  The figures and descriptions in the original application make it very clear that the “vending machine” was to be some component external to the consumer’s laptop.  The continuation-in-part (CIP) filed in 2000 removed this external restriction, introducing examples which included an interface on the consumer’s laptop, and led to the issuance of U.S. Patents Nos. 6,466,658 and 6,721,400.  PowerOasis alleged infringement of the ‘658 and ‘400 patents by T-Mobile.  T-Mobile introduced prior

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Federal Circuit Finds Priority Documents Are Not New Evidence For Purposes of Interference

In In re Harold Garner, Civ Case. No. 2007-1221 (Fed. Cir. December 5, 2007), Calvin F. Quate and David Stern (collectively Quate) are the inventors of U.S. Patent No. 6,480,324, and Harold R. Garner is the inventor of U.S. Application Serial No. 09/998,341.  Quate is the senior party in an interference proceeding between U.S. Patent No. 6,480,324 and U.S. Application Serial No. 09/998,341, and Garner is the junior party based on the effective filing date.  Garner’s patent application was initially rejected based on the filing date of Quate.  Garner attempted to establish a prior reduction to practice for his invention in his 2001 declaration that included:  photos of the device he built before the filing date of that prior art reference and a lab notebook that allegedly showed that the device worked.  John Fondon’s declaration executed on Oct. 20, 2005 was also submitted in a later filing. The evidence was submitted under Rule 131.