Board of Regents of The University of Texas System v. Elmer
| Decision Date | 23 June 2017 |
| Docket Number | Patent Interference 106,062 DK |
| Parties | BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS SYSTEM (Preston S. Wilson, Kevin M. Lee, and Mark S. Wochner, Inventors) v. KARL-HEINZ ELMER, Inventor Junior Party (Patent 8, 689, 935), Senior Party (Patent Application 14/300, 282). Technology Center 2800 |
| Court | Patent Trial and Appeal Board |
Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ Administrative Patent Judges.
JUDGMENT 37 C.F.R. §§ 41.127 AND 41.204(A)(3)
KATZ Administrative Patent Judge.
Following the Decision on Motions (Paper 69) judgment under 35 U.S.C § 135(a)[1] is entered against Junior Party Texas. Texas asserted a conception on 29 April 2009 and a date of "first experiment demonstrating the invention" on 14 May 2009 in its Priority Statement. (See Paper 22.) Because both of these dates are later than the filing date of Elmer's German application, 3 April 2008, which was accorded to Elmer by the grant of its Motion 1, we determine that Texas cannot prevail on a showing of priority.
Therefore it is ORDERED that Texas patent 8, 689, 935 claims 1-14 be CANCELED.
FURTHER ORDERED that a copy of this judgment shall be entered into the administrative record of patent 8, 689, 935, application 14/300, 282.
FURTHER ORDERED that the parties are directed to 35 U.S.C. § 135(c) and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; and
FURTHER ORDERED that a party seeking judicial review timely serve notice on the Director of the United States Patent and Trademark Office; 37 C.F.R. §§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to Biogen Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654-57 (Fed. Cir. 2015) ().
DECISION ON MOTIONS 37 C.F.R. § 41.125(a)
This interference was declared after an initial determination that the claims of patent 8, 689, 935 ("the '935 patent"), assigned to the Board of Regents of the University of Texas System ("Texas") and the claims of application 14/300, 282 ("the '282 application"), owned by Karl-Heinz Elmer ("Elmer") interfere. (See Decl., Paper 1.)
According to the parties' specifications, underwater noise, for example from drilling and pile driving activities, can be harmful to migratory marine animals. ('935 patent", Exh. 2001, at 1:18-20; '282 appl., Exh. 2002, at ¶ 3.) In the past, curtains of air bubbles were used to block sound waves to address this problem. Air bubbles, though, require power and create noise to generate. (See '935 patent, Exh. 2001, at 1:33-42; see '282 appl., Exh. 2002, at ¶¶ 11-13.) The parties both claim apparatuses that use multiple gas-filled containers arranged on an apparatus as a way to block underwater sounds instead of air bubbles. (See [Texas] Clean Copy of Claims, Paper 13, and Elmer Clean Copy of Claims, Paper 5.)
The specific subject matter of the Interference is defined by the Count, which recites:
Three motions are before us in this phase of the interference.[1]
Texas Motion 1 argues that the interference should be terminated because there is no interference-in-fact. (See Paper 23.) We deny this motion.
Texas Motion 2 argues that Elmer's claims are unpatentable under 35 U.S.C. § 112, first paragraph. (See Paper 24.) We deny this motion.
Elmer Motion 1 argues that Elmer should be accorded benefit of its prior German application as a constructive reduction to practice of the Count. (See Paper 32.) We grant this motion.
"Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared . . . ." 35 U.S.C. § 135(a)[2]. Because the interference was declared by an administrative patent judge acting on behalf of the Director, 37 C.F.R. § 41.203(b), there is presumption that at least one claim of each party interferes. To prevail, Texas bears the burden of showing that the parties do not claim the same subject matter. See 37 C.F.R. §§ 41.121(b) and 41.208(b).
Whether an interference occurs is determined by comparing the parties' claims. See Noelle v. Lederman, 355 F.3d 1343, 1352 (Fed. Cir. 2004). Specifically, we determine interference under a "two-way test" wherein "the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa." 37 C.F.R. §41.203(a). See Eli Lilly & Co. v. Bd. of Regents of Univ. of Wash., 334 F.3d 1264, 1270 (Fed. Cir. 2003). Thus, Texas must present sufficient argument, supported by evidence, to persuade us that either none of the Texas claims would anticipate or render obvious any Elmer claims or that none of Elmer's claims would anticipate or render obvious any Texas claims.
Texas's burden is a negative one: to show that the subject matter claimed by each party is not obvious over the other. One of the ways Texas could satisfy this burden is with testimony from a knowledgeable witness. (See Standing Order ¶ 208.1.) Texas did not rely on testimony. We evaluate Texas's arguments based on the evidence it does cite.
Texas argues that Elmer's claims lack certain limitations present in the Texas claims. (See Texas Motion 1, Paper 23, at 1:10-15[3].) First, Texas argues its own claims 1, 12, and 13 require that "the rigid support members prevent vertical and horizontal movement of the plurality of gas-filled containers" while Elmer's claims require "the rigid support members prevent vertical movement of the plurality of gas-filled containers . . . ." (See Texas Motion 1, Paper 23, at 7:16-8:6.)
According to Texas it would not have been obvious to include a rigid support that prevents horizontal, as well as vertical, movement in Elmer's claimed apparatus because the Elmer specification teaches allowing the envelope bodies to "move freely horizontally, at least to a limited extent, " so as to not be an obstacle for fish or other marine life. (See id. at 8:6-21, citing Elmer appl., Exh. 2002, at ¶ 19.) According to Texas, this portion of the Elmer application teaches away from an apparatus with a rigid support that prevents horizontal movement. Texas argues further that its claims and the Elmer claims are different, citing Figure 4 of the Elmer specification and Figure 5A of the Texas patent. (See id. at 8:22-10:7.)
We are not persuaded by this argument because even if the parties' claims are different, if the claims of each party would have been obvious over each other they interfere. See Aelony v. Arni, 547 F.2d 566, 569-70 (C.C.P.A. 1977) (). Therefore, even if Elmer's written disclosure explains benefits of movement in the horizontal direction, the claims interfere if it would have been obvious to prevent such movement. Texas fails to direct us to persuasive evidence that addresses obviousness, such as the testimony of one skilled in the art.
We are also not persuaded that by describing a benefit of horizontal movement, the Elmer specification teaches away from an embodiment where the rigid support members prevent such movement. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Teaching an advantage of a claimed invention does not necessarily discourage one from a different path.
Texas argues further that its claimed configurations provide a better effect, wherein "[b]y connecting gas-filled bodies to the support, the position of the gas-filled bodies is fixed, ensuring more consistent sound-dampening effects since the gas-filled bodies do not move due to water currents." (Texas Motion 1, Paper 23, at 6:16-18, citing '935 patent, Ex. 2001, at 2:10-11, and 10:47-50.) Again, even though there may be differences or advantages to the Texas apparatus, we are not persuaded without evidence showing these differences or advantages would not have been obvious.
Texas argues that during prosecution the examiner allowed its claims only after...
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