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When analyzing written description in interference, claims construed according to patent copied from

June 16, 2009
Post by Blog Staff

In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment in a § 146action brought after an interference proceeding at the USPTO. The district court agreed with the Board's decision to award priority to the senior party in the interference, granting the senior party's motion for summary judgment that its specification satisfied the written description requirement for the interference count. In coming to this conclusion, the district court construed the count by reference to the specification of the senior party's application, rather than by reference to the specification of the junior party's issued patent. The district court also determined the proper standard of review was for substantial evidence, holding the junior party did not advance any "meaningful evidence" apart from what was considered by the Board.The Federal Circuit reversed. The court determined the district court erred both with regard to its determination that 1) the claims should be construed in light of the host application whose written description was being challenged and 2) that evidence proffered to the district court was insufficient to require de novo determination of the facts under § 146. The court reconciled two prior decisions, In re Spina and Rowe v. Dror, dealing with the proper source for claim construction in an interference. As described by the court:

[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language. When a party challenges a claim's validity under § 102 or § 103, however, [the Federal Circuit] and the Board must interpret the claim in light of the specification in which it appears.
Applying this law, the court construed the count in light of the proper specification. In light of the revised construction, the Federal Circuit reversed the district court's grant of summary judgment that the senior party's disclosure met the written description requirement and remanded with instructions to enter summary judgment for the junior party.More detail of Agilent Techs., Inc. v. Affymetrix, Inc. after the jump. Agilent Technologiesowns U.S. Patent No. 6,513,968(the "Schembri" patent) claiming priority to August 21, 1998. The patent deals with microarray hybridizationtechnology, a technique for performing multiple genetic analyses in a small fluid sample. The microarray is a solid substrate bearing molecular probes, generally short DNA sequences that hybridize to specific targets. One adds a fluid sample containing unknown genetic material to the microarray containing the probes, and a detection method is utilized to determine which probes have been bound, revealing the presence of hybridized targets. The disputed invention is described by claim 20 of the patent and focuses primarily upon the method of mixing the fluid for thorough contact with the surface. Claim 20 recites (relevant portions emphasized):
A method comprising:
providing a first substrate and a second substrate having inner surfaces that define a closed chamber therebetween, said chamber adapted to retain a quantity of fluid so that the fluid is in contact with both inner surfaces, and wherein at least one of said inner surfaces is functionalized with polynucleotides, polypeptides, or polysaccharides;
introducing a fluid containing a plurality of components into the closed chamber so as to provide a quantity of fluid therein in contact with both inner surfaces;
providing a bubble in the fluid; and
moving a bubble within the fluid to result in mixing
.

The patent issued in February 2003. Affymetrix, believing it had earlier invented the claimed methods, copied claim 20 into on of its pending applications, U.S. Patent Application No. 10/619,244, in order to provoke interference. The Board of Patent Appeals and Interferences declared an interference to determine which party had earlier inventorship. Because the Besemer application claimed priority back to June 7, 1995, the Board declared Affymetrix the senior party. Before the Board, Agilent argued the Affymetrix application did not provide descriptive support for the interference count. The Board disagreed and awarded priority to Affymetrix's application and cancelled the contested claims of Agilent's patent. Agilent filed a complaint in district court under 35 U.S.C. § 146, seeking review of this decision. The parties submitted new reports from their respective experts as well as additional testimony and in April 2008 the district court held a claim construction hearing. The district court construed "A closed chamber . . . adapted to retain a quantity of fluid" to mean "an enclosed cavity or some other enclosure or system of enclosures, which is capable of being sealed or set apart from its surrounding to retain a quantity of fluid." It came to this construction by consulting the specification of Affymetrix's patent application, attempting to harmonize the construction of the court between the two specifications. Both parties moved for summary judgment on the written description issue: Agilent that Affymetrix's specification failed the written description requirement and Affymetrix that its specification satisfied the requirement. Based on its construction, the district court agreed with the Board that Affymetrix's application sufficiently supported the interference count. Agilent appealed.The Federal Circuit reversed. The court first considered which specification was relevant for purposes of claim construction. To make this determination, the court reviewed two of its previous decisions, In re Spina and Rowe v. Dror. In Spina, an applicant copied a claim from the "Barron" patent to provoke interference. The Board viewed the claim in light of the "Barron" disclosure, from which the claim had been copied. The Federal Circuit agreed with this analysis stating: "When interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context of the patent from which it was copied."In Rowe, Rowe copied several claims from the Dror patent to provoke an interference. In the motions before the Board, Dror filed a motion seeking judgment against Rowe on the ground that a third party patent anticipated some of Rowe's claims corresponding to the interference count. The Federal Circuit decided the claims should be viewed in light of the Rowe disclosure, not the Dror disclosure, from which the claims had been copied. The Federal Circuit distinguished Spina in that this case was comparing the Rowe claim to prior art, rather than to the copied Dror claims. This warranted a different rule because following the Spina rule would cause Rowe's claims to be analyzed against a third-party patent utilizing Dror's specification.The Federal Circuit decided that the case at bar is comparable to Spina and ruled the district court erred and should have viewed the claim in light of the specification in which it appears; the Schembri disclosure. As summarized by the court:

[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language. When a party challenges a claim's validity under § 102 or § 103, however, [the Federal Circuit] and the Board must interpret the claim in light of the specification in which it appears.

Applying this law, the court construed the count in light of the proper specification. The court looked to how the Agilent patent described the "closed chamber" to determine the proper construction of the term.
As depicted in Figures 1 and 4 (below), Agilent's patent mixes the liquid with the oligonucleotides by forming a bubble in a closed hybridization chamber and moving the bubble to cause mixing.

  Figure 1 Figure 4
Conventional methods of shaking or rocking are not sufficient to mix the fluid in the chamber due to the capillary strength such a small amount of fluid. Temperature changes caused by resistors ("13") cause the bubble to move, in turn causing the mixing.Based on this disclosure, the district court's construction was clearly incorrect. It did not make sense to construe a "closed chamber" to be permitted to be only "capable" of being sealed. Further, the chamber could not be a "system of enclosures," because the claim requires the chamber to be "defined" by "a first substrate and a second substrate having inner surfaces." As a result, it must be the substrates that form the boundaries of the chamber; a definition that precludes a "system of enclosures." Accordingly, the Federal Circuit construed "A closed chamber…adapted


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