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Late Claim to Invention Costs Party in Interference

May 29, 2002

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Last Month at the Federal Circuit - June 2002

Lourie (author), Bryson, and Gajarsa

In Berman v. Housey, No. 01-1311 (Fed. Cir. May 29, 2002), the Federal Circuit affirmed a decision by the Board in an interference between Phillip W. Berman et al. (“Berman”) and Gerard M. Housey (“Housey”), entering judgment in favor of Housey and dismissing Berman’s unpatentability motion as moot.

Berman holds a patent application directed to a method of determining whether a substance inhibits the binding of T4 receptors to a T cell binding domain of gp120. Housey also holds several applications and patents directed to the same subject matter. On October 17, 1997, Berman had entered a preliminary amendment canceling all of his claims and introducing a new independent claim 64, and had then requested that an interference be declared with one of Housey’s pending applications. On April 19, 1999, Housey filed a preliminary motion asserting that Berman’s claim 64 was barred under 35 U.S.C. § 135(b) because the claim had not been made within one year of the issuance of Housey’s earlier patents.

Berman opposed and filed a separate preliminary motion asserting that all of Housey’s claims at issue in the interference were unpatentable in view of prior art. The Board found that because Berman did not contest that claim 64 was directed to the same or substantially the same subject matter as the claims of the earlier Housey patents, and because claim 64 had been made more than one year after the issuance of those patents, claim 64 was barred under § 135(b). The Board then dismissed Berman’s pending unpatentability motion as moot.

On appeal, Berman argued that the Board had erred by refusing to address its unpatentability motion because all issues that are fairly raised in an interference proceeding must be decided by the Board. Berman also argued that the Board had erred by terminating the interference under § 135(b).

The Federal Circuit concluded that the Board had not erred by refusing to consider Berman’s unpatentability motion, holding that § 135(b) is a threshold issue that should be addressed by the Board at the preliminary stage of an interference before proceeding on the merits. The Federal Circuit also found that because Berman had never disputed that its claim 64 was directed to the same or substantially the same subject matter as Housey’s earlier patents, Berman was barred from making this argument for the first time on appeal.