Late Interference Claim Requires Support from Pre-Critical Date Claims

In The Regents of the University of California v. University of Iowa Research Foundation, (Fed. Cir.; July 16, 2006) California had attempted to provoke an interference by filing claim 205 more than one year after the ’646 patent issued. However, under 35 USC Section 135(b)(1),

A claim which is the same as, or for the same or substantially the same subject
matter as, a claim of an issued patent may not be made in any application unless
such a claim is made prior to one year from the date on which the patent was
granted.

California argued that when it filed claims 202-204 (with an interferenece request) within a year of the issuance of the ’646 patent, it "discharged" its duty under section 135(b)(1). However, in response to California’s amendment, the PTO rejected claims 202-204. More than one year after the ’646 patent had issued, California added another method claim, claim 205, to the ’191 application. After more prosecution, and another examiner interview, California canceled claims 202-204 and the PTO then declared an interference between claim 205 of California’s ’191 application and Iowa’s ’646 patent.

According to Circuit Judge Rader, California was required to show support between late-filed claim 205 and claims 202-204 which were filed before the crtical date. Requiring the Board to confine its analysis to only pre-critical date claims 202-204 contravenes precedent, the plain meaning of the statute, and the policy underlying that section, this court rejects those contentions:

[O]pinions like Berger, Corbett, and others, see, e.g., Cryns v. Musher, 161 F.2d 217 (CCPA 1947), permit a party confronted with a section 135(b)(1) bar to show that claims filed after the critical date find support in claims filed before the critical date. If a party can show such support, section 135(b)(1) will not act as a bar. Berger, 279 F.3d at 981-82. Thus, California’s position that the relationship between the post- and pre-critical date claims is not relevant to section 135(b)(1) contravenes the weight of precedent. This court has already explained that such a relationship is not only relevant, but dispositive of the section 135(b)(1) question.

California points out that when it filed claims 202-204 within a year of the ’646 issuance it also requested an interference. In Berger and Corbett, the record showed no such interference request before the critical date in the applications at issue. That factual distinction has no legal significance. Section 135(b)(1) does not include any language suggesting that a pre-critical date request for an interference makes any difference. Section 135(b)(1) bars any claim having a degree of identity with a claim in an issued patent unless such a claim is filed before the critical date. Thus, title 35 in this section does not demand notice of an impending interference, but instead prohibits unsupported, post-critical date identity.

California cannot satisfy section 135(b)(1) by supplying notice of an interference. Instead, as this court’s precedent explains, California must demonstrate that claims in the ’191 application provide pre-critical date support for the post-critical date identity between claim 205 and the ’646 patent. That demonstration necessarily
entails a comparison between pre- and post-critical date claims.

Finally, contrary to California’s arguments, no language in Berger or Corbett suggests that the reason the court compared the pre- and post-critical date claims in
those cases was merely because the record showed no request for interference
within the critical time period. In short, the existence of a request for interference is not relevant to a proper section 135(b)(1) analysis.

Like this court’s precedent, the language of section 135(b)(1) does not support California’s proposed construction. California’s construction would convert section 135(b)(1) into a statute of limitations that could be tolled by a single pre-critical date claim. In essence, California contends that the phrase “such a claim” in section 135(b)(1) means any earlier claim that might have given notice of an interference had the PTO declared such an interference. To the contrary, the statutory term “such a claim” refers to the claim that the potentially interfering party seeks to add, which is directed to the same or substantially the same subject matter as that claimed in a patent, regardless of whether that party earlier filed a different claim having the required identity with a patented claim. The statute requires “such a claim” to come before the critical date. Thus, section 135(b)(1) does not refer to some unrelated claim made earlier in prosecution even if accompanied by a request for interference.

The policy underlying section 135(b)(1) also supports the Board’s construction of that section. This court and its predecessors have described section 135(b)(1) as a statute of repose, placing a time limit on a patentee’s exposure to an interference proceeding. See, e.g., Corbett, 568 F.2d at 765 (explaining that Congressional intent behind the predecessor to section 135(b)(1), i.e., R.S. 4903, “was clearly to enact a statute of repose . . . so that the patentee might be more secure in his property right”); Berman v. Housey, 291 F.3d 1345, 1351 (Fed. Cir. 2002) (quoting Corbett). This general explanation, however, does not mean that a patent applicant can “discharge” its obligation under section 135(b)(1) for all future claims by filing any claim that once complies with that section. Contrary to California’s arguments, section 135(b)(1) is not a simple "notice statute" informing patentees about potential interference proceedings.

In fact, no notice at all is provided to the patentee by operation of section 135(b)(1) itself. Rather, in order to serve as a statute of repose, section 135(b)(1) operates in conjunction with the PTO’s duty to declare interferences. The filing of an interfering claim and the subsequent declaration of an interference have a cause-and-effect relationship. By limiting the time period for filing a potentially interfering claim, section 135(b)(1) limits the patentee’s vulnerability to a declaration of an interference only because it limits the window of time in which the cause of the interference can occur. The PTO should declare a valid interference upon receipt of a claim that satisfies section 135(b)(1), and which is otherwise patentable.

Despite the expected cause-and-effect relationship between the filing of an interfering claim and the declaration of an interference, this court’s predecessor observed that the PTO sometimes fails to declare an interference where one exists. As Corbett explains, "[the PTO] should declare an interference whenever copending applications claim substantially the same invention, and, if it fails to do so, the public interest is better served by a belated interference than by the issuance of a second patent." 568 F.2d at 765. In other words, while an interference based on a post-critical date claim is not desirable, where such an interference is merely belated, meaning the same interference should have been earlier declared by the PTO, the interference should not be barred by operation of section 135(b)(1). Thus, the limited exception to the one year bar, provided by the "such a claim" language in section 135(b)(1), allows for belated interferences. Beyond such belated interferences, California’s construction of section 135(b)(1) would permit different interferences because that construction removes from section 135(b)(1) any requirement for a nexus between the pre- and post-critical date claims.