A patent interference is an adversarial proceeding where each party is trying deprive its opponent of a patent on an invention that that the Patent Office has already decided is patentable. Long after the AIA became effective to phase out interferences, the Patent Trial and Appeal Board continues to declare and administer them where at least one of the parties has an interfering application or patent predating the AIA's enactment. The Board declares interferences to avoid the embarrassment and marketplace chaos where the Patent Office issues two patents on the same invention to different parties, and to avoid awarding a patent monopoly to the entity who was not the first to invent. But when the Board declares and adjudicates interferences often depends on the parties. Sometimes an applicant faces a rejection over a patent that is claiming the same invention. Where that patent's filing date appears to be later than the applicant's, the examiner may recommend and the Board may declare an interference to determine which of the two is not first to invent and, thus, should not get the patent. That's what happened in Chevron U.S.A. Inc. v. University of Wyoming Research Corporation, dba, Western Research Institute ("Wyoming"), Appeal 2019-1530 (Fed. Cir. Nov. 4, 2020). But this simple story has an important lesson.
Chevron filed its patent application in 2010 and claimed the priority benefit of a provisional application it filed in 2009. While Chevron's application was pending, Wyoming was prosecuting its own application, filed in 2012, on similar subject matter. Wyoming noticed that its specification arguably described the same invention that Chevron's application was claiming. So, Wyoming copied Chevron's application claims and told its examiner as much, but cautioned an interference would be premature, at least because Chevron did not have an allowable claim—a de facto predicate to an interference is that both parties have allowable claims. Ultimately, in 2013, the Patent Office issued Wyoming a patent. Years later, in 2016, Chevron's examiner determined Chevron's application was allowable. But standing in the way of issuance was Wyoming's patent. So, Chevron's examiner recommended and the Board declared an interference.
As the interference began, both sides lobbed allegations that the other derived the invention from its own inventors. But that went nowhere. Importantly, during the interference, Wyoming successfully moved the Board to accord it the benefit of the filing dates of a series of earlier continuation applications and its 2005 provisional application—an application filed nearly four years before Chevron's. Chevron unsuccessfully complained in its own motion that, regardless of those earlier applications, none of Wyoming's specifications includes a written description or enabling description of the claims it copied from Chevron's application. The Board entertained competing expert testimony, but decided that, on intrinsic evidence including Chevron's express definition of one challenged term ("gradually"), Chevron hadn't presented preponderant evidence that Wyoming couldn't claim the same invention. Ultimately, the Board issued a judgment against Chevron.
Setting aside the complexities of the invention (relating to refining crude oil) and the competing expert testimony, Chevron's failed motion was not as straightforward as one might imagine. The Board was not merely charged with reviewing the claim terms and Wyoming's specifications for descriptive support. No, the Board first had to construe the claim terms based on Chevron's specification—because that's where the copied claims originated—and only then could it assess whether Wyoming's patent and earlier specifications contained sufficiently descriptive support. The Federal Circuit's 2009 decision in Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009), requires this seemingly convoluted assessment. The Board followed Agilent, construed that term in a way that ultimately turned the whole case against Chevron. Specifically, the Board construed that term broadly enough that it at least encompassed what Wyoming's patent and earlier specifications described. Had the Board construed that term more narrowly, as Chevron argued, Chevron may have prevailed, and Wyoming may have lost its patent.
On appeal, Chevron did not argue that Wyoming's patent and earlier specifications lacked written description and enablement of the copied claims under the Board's claim construction. Instead, Chevron argued that the Board's claim construction was too broad and that under a narrower construction Wyoming's patent and earlier specifications lacked written description and enablement. But standing in the way of Chevron's claim construction argument was its own specification that expressly defined the term. The Federal Circuit noted that "the Board tracked verbatim [Chevron's definition] in its construction." The court reviewed the Board's construction de novo, ultimately concluded that that the Board did not err and, thus, affirmed the Board's judgment. Chevron, Slip Op. at 11. The court's decision wasn't unanimous. To the dissenting judge, Wyoming's patent only mentions the interfering invention in the claims it copied. Chevron, Dissenting Op. at 3–4. To that judge, Wyoming's patent specification described an invention that did not interfere with Chevron's (i.e., there was no interference-in-fact). The dissent therefore found improper that Wyoming can walk away with a broad patent where its inventors did not even assert they conceived or reduced the claimed invention to practice. Id. at 12.
The dissent's views might be academically interesting, but during the interference neither party thought their claims did not interfere and, moreover, the Patent Office did not think so either. Aside from the interference itself, this case importantly illustrates what an early-filing applicant can do to prevent a later filer from getting a patent. Sure, a careful examiner might reject the later filer's application over the earlier one. But that's no sure thing. Here, Wyoming (the early filer) monitored Chevron's application, noticed what Chevron was trying to claim, and mined its own application for a patentably indistinct invention. In time, Wyoming claimed that invention, obtained the patent and, by prevailing in the interference, prevented Chevron from getting a patent. And guess what: Wyoming is not known to be in the business of practicing the invention—crude-oil refining—but Chevron is. By conscientiously mining its application, Wyoming may have found a licensee, albeit a reluctant one perhaps.
Originally Published by Marshall Gerstein, December 2020
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.