Board interference decision finding UW to be senior party affirmed based on proper claim construction

Chevron U.S.A. Inc. v. University of Wyoming Corp. et al.

Docket No. 2019-1530 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1530.OPINION.11-4-2020_1680467.pdf)

NEWMAN, LOURIE, SCHALL

November 4, 2020

Brief Summary:  Board interference decision finding UW to be senior party affirmed based on proper claim construction.

Summary:  Chevron appealed USPTO (“Board”) interference decision finding UW to be the senior party regarding the claimed subject matter of US 8,367,425 since Chevron was unable to show a sufficiently early “corroborated conception coupled with diligence”.  The FC panel explained that Chevron presented it “only one, narrow issue:  whether the Board erred in its construction of the limitation ‘gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent’” and that “the parties concur that if we agree with the Board’s construction of ‘gradually,’ we must affirm”.  The FC panel reviewed the Board’s construction de novo since “the intrinsic record fully governs the proper construction” of the term” (In re Power Int., FC 2018; ULF Bamberg, FC 2016 (broadest reasonable construction “[b]ecause Wyoming copies claim 1 of Chevron’s ‘814 application to provoke the interference”, “in the context of the ‘814 application”)).  Chevron argued “the specification discloses that the solvent is ‘gradually and continuously’ changed at the inlet of the column” while UW argued “that…the ‘814 application itself specifically and unambiguously provides a definition”.  The FC panel agreed with UW because, “[f]irst and most significantly, [para.] 37 of the ‘814 application…provides an express definition of ‘gradually’” that “requires ‘incremental[] remov[al]’ and ‘continuous[] adding’” and other examples did not require “the claimed ‘chang[ing]’ be limited to occurring at the column’s inlet” (“‘gradually’ ‘shall be understood to mean’”; distinguished from In re Suitco (FC 2010)).  The FC panel also found no error with the Board’s reliance solely on the specification after accepting expert testimony from both sides as it, e.g., “simply…confirm[ed] its understanding…that Wyoming’s ‘425 patent had adequate written description”, or its consideration of “ ‘gradually’ and ‘continuously’ separately” since “the ‘814 application defined ‘gradually,’ an adverb generally used to describe the pace at which something is performed, ‘[to] be understood to mean…continuously adding a final mobile phase solvent” (also distinguishing Haemonetics (D. Mass. 2007) and Bicon, both “correct[ing] claim constructions that were inconsistent with the patent’s specification”)).  The FC panel therefore affirmed the Board decision.  Judge Newman’s dissent argued that “[t]he Wyoming specification does not describe and does not support the claims copied from Chevron” (“only mention of the Chevron method is in the claims that Wyoming copied from Chevron” (Ariad, FC 2010 (written description); extensive analysis provided in the dissent).

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