Hedmanv.Slivka et al.

Patent Trials and Appeals Board

Feb 28, 2013

10102075 - (J) (P.T.A.B. Feb. 28, 2013)

BoxInterferences@uspto.gov Paper 169
Telephone: 571-272-4683 ENTERED: 28 February 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD

Patent Interference No. 105,653

UNIVERSITY OF SOUTHERN CALIFORNIA
and Ampac Biotechnology, Inc.
(10/230,671),
Junior Party,

v.

DEPUY SPINE, INC.
(6,812,211),
Senior Party.

Before: RICHARD E. SCHAFER, RICHARD TORCZON and SALLY
GARDNER LANE, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

JUDGMENT
Bd.R. 127
on merits

On remand from the Court of Appeals for the Federal Circuit, the
junior party (the University) was afforded an opportunity to move to change
the count and establish priority for the new count. The University did not
Interference No. 105,653 Page 2

NOTICE: "Any agreement or understanding between parties to an interference,
including any collateral agreements referred to therein, made in connection with or in
contemplation of the termination of the interference, shall be in writing and a true
copy thereof filed in the Patent and Trademark Office before the termination of the
interference as between the said parties to the agreement or understanding." 35 U.S.C.
135(c); see also Bd.R. 205 (settlement agreements).
meet its facial burden of justifying a new count. The University had
previously established the unpatentability of the claims of the senior party
(DePuy).
Accordingly, judgment is entered against the University for count 3,
the sole count1;
Claims 1-15 and 18-37 of the University's involved 10/230,671
application are FINALLY REFUSED;2 and
Claims 1-45 of Depuy's involved 6,812,211 patent are CANCELED.3

A copy of this judgment will be entered in the administrative records
of the involved patent and the involved application.

cc:

ROBERT BERLINER and MILES YAMANAKA, Berliner & Associates, of Los
Angeles, California.

BARRY E. BRETSCHNEIDER and MICHAEL E. ANDERSON, Baker & Hostetler
LLP, of Washington, D.C.

1 Paper 83 at 2.
2 35 U.S.C. 135(a).
3 Id.

BoxInterferences@uspto.gov Paper 168
Telephone: 571-272-4683 ENTERED: 28 February 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD

Patent Interference No. 105,653

UNIVERSITY OF SOUTHERN CALIFORNIA
and Ampac Biotechnology, Inc.
(10/230,671),
Junior Party,

v.

DEPUY SPINE, INC.
(6,812,211),
Senior Party.

HEARD: 7 February 2013

Before: RICHARD E. SCHAFER, RICHARD TORCZON and SALLY
GARDNER LANE, Administrative Patent Judges.

PER CURIAM.
DECISION
Bd.R. 125
on priority

The junior party (University) has two pending motions: motion 12 to
change the count and to be accorded benefit of an earlier application for the
new count and motion 13 for priority contingent on the granting of
Interference No. 105,653 Page 2

motion 12. The senior party has a single motion, motion 6, for priority.
We—
DENY University motion 12,
DISMISS University motion 13 and
DISMISS DePuy motion 6.
OPINION
I. INTRODUCTION
As a result of earlier proceedings, DePuy has no patentable claims.1
An earlier decision on priority against the University was vacated so the
University could "be afforded the opportunity to file a motion to change the
count."2
For the current count (count 3), each party has only been accorded the
benefit of its involved application or patent:3
University: 10/230,671, filed 29 August 2002
DePuy: 10/102,075, filed 19 March 2002.
In its motion 12, the University seeks a different count (count 4) with
additional accorded benefit,4 which would give it a filing date in 2001.5 If it

1 While not the model outcome, it is possible for both litigants to lose when
more than one issue is contested. Perkins v. Kwon, 886 F.2d 325 (Fed. Cir.
1989) (affirming Kwon's loss on patentability after Perkins' loss on priority);
cf. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir.
2012) (Wrigley's claim anticipated; Cadbury's patent not infringed).
2 Univ. of S. Cal. v. DePuy Spine, Inc., App. No. 2011-1422, slip op. at 5
(Fed. Cir., 22 March 2012) (non-prec.).
3 Redecl. (Paper 83) at 2.
4 Univ. Mot. 12 (Paper 143) at 1 & 17.
5 Exh. 1002: T. Hedman, Use of non-toxic crosslinking reagents to improve
fatigue resistance and reduce mechanical degradation of intervertebral disc

Interference No. 105,653 Page 3

attains this new date, the University would once again be the senior party.
Since each party is resting on its filing date (that is, its constructive
reduction to practice) for its priority proof, whoever is ultimately determined
to be the junior party will lose the priority contest.6
II. UNIVERSITY MOTION FOR A NEW COUNT
A. The counts
The present count defines the interfering subject matter in terms of the
University's claim 24.7 The University seeks to substitute a new count
defined by its claim 7.8 Both the present count and the proposed count
would define the common subject matter as a method, as follows (emphasis
added):9
Count 3 (Claim 24) Proposed Count 4 (Claim 7)
A method of improving the
resistance of a intervertebral disc to
mechanical degradation by treating in
a living being the intervertebral disc
having a nucleus pulposus which is
degraded or subject to ongoing
degradation, comprising the step of:
A method of improving the
resistance of a collagenous tissue
having pyridinoline cross links to
mechanical degradation comprising the
steps of:
a) injecting a composition
consisting essentially of a crosslinking
agent into the nucleus pulposus,
contacting at least a portion of
a load bearing collagenous tissue
within a human body with an effective
amount of a crosslinking reagent

and other collagenous tissues, Provisional appl'n 60/316,287 (31 August
2001).
6 Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002) (junior party has
ultimate burden to prove priority); accord Bd.R. 207(a)(1) (priority is
presumed to follow seniority).
7 Redecl. at 2.
8 Univ. Mot. 12 at 1.
9 Univ. Clean Claims (Paper 6).
Interference No. 105,653 Page 4

having at least one crosslinking agent
under conditions within physiologic
limits to prevent tissue overheating,
wherein the crosslinking agent is
injected in an effective amount to cause
in-situ crosslinking of native proteins
present in the nucleus pulposus.
wherein the collagenous tissue is
an intervertebral disc.

The proposed count is broader in some aspects and narrower in other
aspects than the current count. For example, the change from a nucleus
pulposus to an intervertebral disc appears to be broadening, assuming
pyridinoline cross links is an inherent feature of intervertebral discs.
Similarly, the change from injecting to contacting is broadening. The
proposed count eliminates treatment of a living being, which is broadening,
although contacting must occur in a human (not necessarily living) body,
which is narrowing inasmuch as it limits "being" to human. The addition of
the negative limitation for tissue overheating has no analogue in the current
count and is thus facially narrowing.
B. Count practice
The board once held that:10
indication that the amendment of the counts would conform
with or facilitate [the movant's] best proofs is an accepted
reason in interference practice for granting such a motion and is
in compliance with the requirements of [37 C.F.R.] § 1.637(a).
Subsequent experience, however, demonstrated the unworkability of this
"conclusory"11 approach. For three decades, the movant has had the burden

10 Grose v. Plank, 15 USPQ2d 1338, 1342 (BPAI 1990).
11 Louis v. Okada, 59 USPQ2d 1073, 1075-76 (BPAI 2001).
Interference No. 105,653 Page 5

of proof in interferences;12 hence, compliance with a formal requirement is
not in itself sufficient to grant a motion on the merits.13 Old Rule 637(a),
which arguably led to a misapprehension of the obligations of the movant
has not existed for nearly a decade.14 A motion is not simply a pleading;15
instead, the framework for moving for a new count now rests squarely on
statutory requirements and subsequent case law development, some of which
is restated in the current rules and the standing order.16
In interferences, the count is a narrowly applicable tool of
convenience, a vehicle for contesting priority of invention and determining
the scope of the admissible evidence,17 as well as any resulting estoppel.18 A
count is distinguishable from a claim, even when identically worded.19

12 Kubota v. Shibuya, 999 F.2d 517, 520-21 text & n.3 (Fed. Cir. 1993)
(explaining that under the 1985 interference rules, including Rule 637, the
movant has the burden of proof).
13 Hillman v. Shyamala, 55 USPQ2d 1220, 1221 (2000) (expanded panel)
(explaining that compliance with the formalities of Rule 637 does not
require grant of the motion that fails on substantive grounds).
14 Significantly, the other cases on which the University relies (Univ.
Mot. 12 at 2), Kondo v. Martel, 220 USPQ 47, 49 (Bd. Pat. Int. 1983), and
Nelson v. Drabek, 212 USPQ 98 (Comm'r Pats. 1979), predate the statutory
and practice reforms of the mid-1980s.
15 Priority statements and motions lists share some attributes of pleadings,
Bd.R. 120 and Bd.R. 204, but motions are motions, Bd.R. 121.
16 E.g., Bd.R. 121 & Bd.R. 208 and corresponding sections of the Standing
Order ("SO", Paper 2, the 2006 version). See In re Sullivan, 362 F.3d 1324,
1328 (Fed. Cir. 2004) (explaining that a standing order is an appropriate way
to administer interferences).
17 In re Van Geuns, 988 F.2d 1181, 1186 (Fed. Cir. 1993); accord Hunt v.
Treppschuh, 523 F.2d 1386, 1389 (CCPA 1975); cf. Bd.R. 201 (defining
"Count").
18 In re Kroekel, 803 F.2d 705, 709-10 (Fed. Cir. 1986).
19 Squires v. Corbett, 560 F.2d 424, 433 (CCPA 1977).
Interference No. 105,653 Page 6

Significantly, the count need not be patentable to either party. For example,
a count with a broader scope than either party could support in a claim is not
per se improper because each party need only have a single anticipating
embodiment (namely, a constructive reduction to practice) within the scope
of the count.20
The rule revision in 2004 reiterates that a movant has the burden of
showing it is entitled to the relief it seeks.21 The movant must provide a
facially sufficient case in the motion itself.22 A movant seeking a different
count must show the count would be patentable over the prior art.23 The
standing order provides guidance on proving non-obviousness and
recommends the use of "testimony from a knowledgeable witness certifying
that there is no known prior art that would have overcome the differences".24
The standing order also provides guidance on substituting a count.25
In Louis v. Okada, an expanded panel of the board expressly rejected
the contention that merely indicating one has better proofs outside the scope

20 Hunt, 523 F.2d at 1389; accord 35 U.S.C. 102(g)(1); cf. Bd.R. 201
(defining "Accord benefit" in terms of a constructive reduction to practice
under § 102(g)(1)).
21 Bd.R. 121(b).
22 Bd.R. 208(b).
23 Bd.R. 208(c); Louis v. Okada, 59 USPQ2d 1073, 1074-75 (BPAI 2001)
(expanded panel) (movant for broader count must show patentability over
prior art).
24 SO ¶ 208.1, "Proving the subject matter is not obvious"; accord Minkin v.
Gibbons, P.C., 680 F.3d 1341, 1350-51 (Fed. Cir. 2012) (discussing how to
prove non-obviousness); Davis v. Brouse McDowell, L.P.A., 596 F.3d 1355,
1360-61 (Fed. Cir. 2010) (same).
25 SO ¶ 208.2.
Interference No. 105,653 Page 7

of the current count is a sufficient reason to change the count.26 The board
discussed several problems with this position.
A broader count, particularly one broader than any examined claim,
could raise "a lingering question or doubt as to patentability [over prior art
that] arises from the face of the moving party's prosecution history."27 In
Louis, the proposed count would have eliminated an amendment added to
overcome a prior-art rejection.28 The board found the inconsistency facially
troubling and held that the movant should have explained this inconsistency
rather than leaving it for the opponent and the board to address.29
The Louis opinion also states two additional concerns. First, the
board observed that a count might be changed in a way to include subject
matter over which there was no interference between the parties.30 Second,
the mere assertion that best proofs are outside the scope of the count leaves
no basis for a decision so:31
a preliminary motion to broaden out the count on the basis that
a party's best or earliest proofs are outside of the current count
(1) should make a proffer of the party's best proofs,
(2) show that such best proofs indeed lie outside of the
scope of the current count, and
(3) further show that the proposed new count is not
excessively broad with respect to what the party needs for its
best proofs.

26 59 USPQ2d at 1076.
27 Id.
28 Id.
29 Id.
30 Id. at 1075-76.
31 Id. at 1076.
Interference No. 105,653 Page 8

Regarding its first concern about keeping the scope of the count
consistent with the actual interfering subject matter, the board discussed the
need for an interference in terms of the parties’ claims.32 In the present case,
the analysis must be refined because DePuy no longer has patentable claims
that could make up the count; rather, we must focus, as the court did in
Hunt, on what the parties disclose in their earliest constructive reduction to
practice, which is in any case the basis on which priority must be proved in
the first instance (i.e., when according benefit of a constructive reduction to
practice).33 Moreover, in this case, it is the only basis on which either party
is contesting priority.
C. University proffer
1. Background
The present count is, as far as the University's proofs are concerned,
substantially the same as the original count inasmuch as it allows priority
proofs within the scope defined by the University's claim 24.34 The
University was initially accorded the benefit of its provisional application
for the original count.35 In other words, the board initially presumed that the
University's provisional application provided a constructive reduction to
practice within the scope of count 1. With this accorded benefit, the
University started the interference as the senior party.

32 Id.
33 Hunt, 523 F.2d at 1389; Bd.R. 201 ("Accord benefit" and "Constructive
reduction to practice").
34 Declaration (Paper 1) at 3 (defining the count as the method of DePuy's
claim 1 or the University's claim 24).
35 Id. at 2-4.
Interference No. 105,653 Page 9

DePuy successfully attacked this presumption. Specifically, DePuy
showed that the University's provisional application did not disclose
injecting crosslinking agents into a nucleus pulposus. The board decision on
motions explained that, under the case law for constructive reduction to
practice, it is not sufficient for the disclosure to have rendered the invention
of the count obvious, it must be expressly or inherently present in the
disclosure.36 Accordingly, for the present count 3, which is still defined in
terms of the University's claim 24, the University was only accorded the
benefit of its involved application and thus became the junior party. This
determination was not reversed on judicial review.
The University had already moved for a broader count (proposed
count 2) that is much like the presently proposed count (proposed count 4).37
Proposed count 2 defined the interfering subject matter as:38
A method of treating in a living being an intervertebral
disc having collagenous tissue, comprising the step of
contacting the collagenous tissue with a composition
consisting essentially of a crosslinking agent,
wherein the crosslinking agent is in an effective amount
to cause in-situ crosslinking of native proteins present in the
collagenous tissue.
Proposed counts 2 and 4 both depart from the present count in that the
treatment occurs in an intervertebral disc rather than a nucleus pulposus and

36 Dec'n on Mots. (Paper 82) at 9-10 (explaining anticipation under §
102(g)(1)).
37 The University did not seek authorization to move contingently for
proposed count 4 in the event that its motion to substitute proposed count 2
was denied.
38 Id. at 40 (indenting added).
Interference No. 105,653 Page 10

involves contacting rather than injecting. Proposed count 2 was broader
than presently proposed count 4 in that it lacks the human body requirement
and the overheating negative limitation. For proposed count 2, however, the
proffered best proof was a grant application rather than the University's
provisional application.39
DePuy successfully opposed the motion to substitute proposed
count 2, noting that the University had not established the patentability of
the proposed count over an Aksan patent, which had been used as a basis for
rejecting the University's claims during examination.40 The University
argued that the limitations it had added (pyridinoline cross links and
preventing tissue overheating) to overcome the rejection were simply
inherent to crosslinking in an intervertebral disc in a living being and that
Aksan did not teach crosslinking native proteins.41
The board held that Aksan taught the subject matter of proposed
count 2:42
Aksan expressly teaches treating a living being (in vivo) by
crosslinking collagenous tissues of the spine. While Aksan does
not expressly teach treating a disc, the disc has the major
collagenous tissues of the spine. Aksan also uses heat treatment,
but since Aksan also teaches use of its method in vivo, there is
facially nothing inherently inconsistent with using heat

39 Id. We note that when the University filed this earlier motion to change
the count, it had not yet been stripped of the accorded benefit of its
provisional application.
40 Id. at 41, citing A. Aksan & J.J. McGrath, Method for controlling the
chemical and heat induced responses of collagenous materials, US
6,375,672 B1 (2002) (Exh. 2015).
41 Dec'n at 41-42.
42 Id. at 42.
Interference No. 105,653 Page 11

treatment in a living being. The count itself does not exclude
the use of a heat treatment.
This determination also survived judicial review.
2. The University's contentions
Regarding the patentability of proposed count 4, the University states
that its claim 7 was allowed over prior art, including the Aksan patent and a
Lee publication.43 During examination, the University had added "having
pyidoline [sic] cross links" and "under conditions within physiologic limits
to prevent tissue overheating" to overcome the rejection.44
Regarding the relevance of the count to the parties' inventions, the
University stipulates45 that its claims 1-15, 18-23 and 37 would correspond
to the proposed count.46 The University's involved claims are 1-15 and 18-
37.47 It is not clear why the University omitted claims 24-36 as
corresponding, although these claims were previously held to be
unpatentable for lack of written description.48 The rules explain that for
priority determinations, corresponding claims are considered to stand or fall

43 Univ. Mot. 12 at 3, citing T. C.-J. Lee et al., Chemical modification of
biomedical materials with genipin, WO 98/19718 (pub'd 1998) (Exh. 2016).
44 Exh. 2009 at 3 & 8-9.
45 A stipulation of correspondence is, effectively, an admission against
interest that a loss on priority would render each corresponding claim
unpatentable. While an unsupported admission is not necessarily
conclusive, Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1312 (Fed.
Cir. 2007), neither party has pointed us to evidence inconsistent with the
admission.
46 Univ. Mot. 12 at 3.
47 Decl. at 3; Redecl. at 2.
48 Redecl. at 2; Dec'n at 9.
Interference No. 105,653 Page 12

together.49 The standing order interprets the rule as placing the onus on the
movant to explain why each of its involved claims would or would not
correspond to the proposed count.50 A claim may be unpatentable for more
than one reason. A lack of written description does not shield a claim from
unpatentability under § 102(g)(1) as well.51 Since the University has not
explained why claims 24-36 do not correspond to the proposed count, they
are properly treated as though they would correspond.
The University argues that each of DePuy's involved claims would
also correspond to the proposed count. In particular, the University argues
that:52
Count 4 is virtually identical in all essential aspects to
University’s claim 1 (leaving out University’s claim 1 reference
to fatigue resistance of the tissue and calling for the collagenous
tissue to be an intervertebral disc). Accordingly, the Board has
in essence already determined that Count 4 and at least DePuy’s
claim 1 are mutually obvious and thus interfere.
Similarly, the University argues that:53
the Board held that all of DePuy’s claims are obvious over the
Hedman presentation. Count 4 is not patentably different from
the Hedman presentation so that under the law of the case, all of
DePuy’s claims should be held to be obvious over Count 4.
The differences between Count 4 and Count 3 are also the
differences between Count 4 and DePuy’s claims and were all

49 Bd.R. 207(b)(1).
50 SO ¶ 208.2, item 3.
51 Indeed, inasmuch as a lack of written description may signal a failure to
provide a constructive reduction to practice, there is likely to be a strong
correlation between these bases of unpatentability.
52 Univ. Mot. 12 at 3.
53 Id. at 3-4 (footnote and record citations omitted).
Interference No. 105,653 Page 13

specifically dealt with by the Board in denying DePuy’s Motion
[for no interference-in-fact].
Accordingly, we understand the University to contend for the purpose of its
motion that the board's obviousness determinations in the declaration and
previous decisions are controlling.
The University addresses differences between present count 3 and
proposed count 4. Regarding the substitution of "collagenous tissue" for
"nucleus pulposus", the University contends that "reference to the nucleus
pulposus of an intervertebral disc…is not patentably significant".54 DePuy
does not contest most of the facts on which the University relies for this
proposition, but does not admit that an injected reagent would be expected to
diffuse to, and thereby treat, adjacent tissues.55
Regarding the substitution of "contacting" for "injecting", the
University relies on an earlier decision in this case that injecting a
crosslinking agent into an intervertebral disc would have been obvious from
contacting by soaking the disc in the agent.56
Regarding collagenous tissue having pyridinoline cross links, the
University relies on a 1998 article that does not appear in the record.57
Nevertheless, DePuy responds to a related material fact:58
Denied that such [pyridinoline] cross links are "predominant";
admitted that such cross links are more common than other
cross links in intervertebral discs.

54 Univ. Mot. 12 at 4.
55 Univ. Rep. 12 at 15-16 (mat'l facts 3-7 & 9 admitted; mat'l fact 8 denied).
56 Univ. Mot. 12 at 6.
57 Id. at 7, citing "Exhibit 1181".
58 DePuy Opp. 12 (Paper 155) at 16.
Interference No. 105,653 Page 14

Since the collagenous tissue of the proposed count is described both as
"having pyridinoline cross links" and as being "an intervertebral disc", as
long as intervertebral discs have pyridinoline cross links, the pyridinoline
limitation does not change the scope of the proposed count. Alternatively,
we accept the University's argument as an admission that "having
pyridinoline cross links" would have been obvious to those in the art as of
1998.
Regarding "contacting…under conditions within physiologic limits to
prevent tissue overheating", the University notes that DePuy's motion for no
interference-in-fact failed to show that this limitation would not have been
obvious, but argues that it is a limitation that the University added to
overcome a rejection based on the Aksan patent.59
DePuy contends that the University has not met its burden of proof as
the moving party.60
3. The prior art
In the earlier decision on motions, we held that the Aksan taught a
need to treat collagenous tissue in the spine and taught injecting collagenous
tissue (in the example, skin) with a crosslinking agent.61 The decision relied
on the University's contention "that the added limitations (pyridinoline
crosslinks and preventing tissue overheating) are inherent to crosslinking in
a living being."62 The earlier decision made the following findings:

59 Univ. Mot. 12 at 7.
60 DePuy Opp. 12 (Paper 155) at 1.
61 Dec'n at 19-20 & 41.
62 Dec'n at 41-42.
Interference No. 105,653 Page 15

[35] The difference between Aksan's method and the proposed
count [2] is that Aksan identifies collagenous tissues of the
spine as a treatment target, but does not specify the collagenous
tissues of the intervertebral disc.
[36] The parties do not dispute that a person having ordinary
skill in the art at the times of their respective inventions would
have known that the spine has as major structures intervertebral
discs, which in turn have as a major component collagenous
tissues.
Aksan itself teaches that part of its invention was the combination of
existing crosslinking and heat treatments.63 Since it was the combination
that was new, it follows that each of the separate treatments was not new.
Accordingly, using crosslinking without a heat treatment would not have
distinguished over the state of the art prior to Aksan, although it would be
different than what Aksan disclosed as an improvement over that prior art.
D. Analysis
The key differences between the University's proposed count 4 and its
previously proposed count 2 are as follows:
Proposed Count 2 Proposed Count 4 (Claim 7)
A method of treating in a living
being an intervertebral disc having
collagenous tissue, comprising the step
of
A method of improving the
resistance of a collagenous tissue
having pyridinoline cross links to
mechanical degradation comprising the
steps of:

63 Aksan at 3:51-54 ("in particular, chemical cross-linking has not been used
in conjunction with thermotherapy.").
Interference No. 105,653 Page 16

contacting the collagenous tissue
with a composition consisting
essentially of a crosslinking agent,
contacting at least a portion of a
load bearing collagenous tissue within
a human body with an effective
amount of a crosslinking reagent
having at least one crosslinking agent
under conditions within physiologic
limits to prevent tissue overheating,
wherein the crosslinking agent is
in an effective amount to cause in-situ
crosslinking of native proteins present
in the collagenous tissue.
wherein the collagenous tissue is
an intervertebral disc.
The key differences between the earlier proposed count and the
presently proposed count are the pyridinoline cross links in load bearing
collagenous tissue within a human body and the avoidance of tissue
overheating. These differences are not patentable distinctions, however.
Aksan teaches treating collagenous tissues of human spines. Those skilled
in the art would have appreciated that such tissue have (predominantly or
not) pyridinoline cross links. The University believes that DePuy should be
bound by our earlier holding that avoiding overheating would have been
obvious. In view of the teachings in Aksan, our earlier holding continues to
be supported by a preponderance of the evidence.
The University relies solely on the examiner's allowance of its claim 7
(the basis for proposed count 4) as showing patentability of the count over
the prior art. It is well-established, however, that the examiner's ex parte
decision to allow a claim does not bind either DePuy or the board.64 As the

64 Glaxo Wellcome, Inc. v. Cabilly, 56 USPQ2d 1983, 1984 (BPAI 2000),
citing Switzer v. Sockman, 333 F.2d 935, 942 (CCPA 1964) and Sze v.
Bloch, 458 F.2d 137, 141 (CCPA 1972); Heymes v. Takaya, 6 USPQ2d
1448, 1454 (BPAI 1988); cf. Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d
1253, 1260-61 (Fed. Cir. 2012) (invalidity) (explaining "whether a reference

Interference No. 105,653 Page 17

court explained in Switzer, the opponent was not a party to the ex parte
proceeding and, thus, cannot fairly be bound by the conclusion in that
proceeding, particularly because the record of the interference is different.65
In Heymes, the board explained that:66
Heymes relies repeatedly on the fact that he was able to
persuade the primary examiner in his involved application that
the claims within the count were patentable over Takaya's
parent patent. Thus, Heymes urges the "patent office" has
already found that the compounds of the count are not
supported in the Takaya disclosure. Apparently, Heymes
believes that the decision of the primary examiner during the ex
parte prosecution of his involved application should be binding
on Takaya in this inter partes proceeding and on the Board of
Patent Appeals and Interferences. We know of no authority for
such a proposition, and we accordingly reject the notion that
Takaya is not entitled to a decision on the merits from this
Board.
As the movant, the University has the burden to demonstrate the
proposed count would be patentable, which means that there is no
presumption that it is patentable. Even if the examiner's ex parte allowance
of a claim might be thought to create a presumption that the subject matter
of the count is patentable, presumptions dissipate in the face of evidence. As
the Court of Appeals for the Federal Circuit has explained:67

was before the [examiner] goes to the weight of the evidence, and the parties
are of course free to, and generally do, make these arguments to the fact
finder.").
65 Switzer, 333 F.2d at 942 (opponent not bound by earlier district court
decision arising out of ex parte examination); accord Sze, 458 F.2d at 141
(same for earlier board decision on appeal from ex parte examination).
66 Heymes, 6 USPQ2d at 1453-54.
67 Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1579 (Fed.
Cir. 1984).
Interference No. 105,653 Page 18

A presumption does not enjoy the status of evidence. If a
finding on the evidence is made that a presumed fact has been
effectively rebutted, the presumed fact ceases to exist. It does
not linger on to be weighted against the evidence. If evidence
is provided which falls short of meeting the threshold of
rebuttal, the presumed fact retains its viability.
In this interference, the University has staked out positions that are
inconsistent with the examiner's decision to allow claim 7. Specifically,
both of the limitations that the University added to overcome the cited prior
art are elements that the University contends are inherent or obvious. The
examiner presumably would not have allowed claim 7 if these admissions
had been in the prosecution record.
The situation we face is much like the situation in Louis v. Okada,
where the movant wished to obtain a broader count, but the count was
broader than the position the movant had staked out during prosecution. The
present case differs because the proposed count is identical to an allowed
claim. This difference is not significant, however, because arguments (with
supporting evidence) that the University has chosen to make in the
interference (but not during prosecution) negate the effect of the
amendments that led to the allowance. Consequently, as in Louis v. Okada,
we have a count that is facially unpatentable over the prior art.
DePuy argues that the University has failed to show that proposed
count 4 reflects the interfering subject matter of the parties or that DePuy's
claims would correspond to proposed count 4. The University contended
that the differences would have been inherent or obvious. We accepted the
University's contentions above because they are consistent with our previous
findings and the evidence of record. Nevertheless, in the alternative, if we
are wrong about the state of the art, then DePuy would necessarily be right
Interference No. 105,653 Page 19

that the University's motion must be denied for having failed to prove the
obviousness and inherency on which it relies.
E. Holding
The University has not met its burden in justifying the proposed
count. Specifically, the University has not shown that the subject matter of
the count would have been patentable over the prior art of record known to
the University because it was part of its prosecution history or of the
interference record at the time the motion was filed. The mere statement
that claim 7 was allowed was not sufficient, particularly in light of the
evidence and previous findings in the interference and of the University's
arguments regarding DePuy's claims. Alternatively, if the evidence, findings
and arguments do not support a holding based on unpatentability of the
count, then the University has failed to establish a relationship between the
proposed count and any interferingsubject matter common to the parties.
F. Was this motion really necessary?
Both parties contend that the board need not actually decide this
motion. In opposition to the motion, DePuy urges that the court merely
wanted an explanation of the non-panel interlocutory order that was the
subject of the court's decision, providing reasons why the University may
not file the motion.68 The University argues in its opposition to DePuy'
priority motion that there is no reason to reach priority.69 As a matter of

68 DePuy Opp. 12 at 2-4.
69 Univ. Opp. 6 (Paper 152) at 2-5.
Interference No. 105,653 Page 20

logic, if we need not reach priority, then there is no reason to have a count at
all, much less a new count.
These arguments are not consistent with the plain language of the
court's holding and are too late. The court ended its opinion with the
direction that the University "be afforded the opportunity to file a motion to
change the count."70 The plain language of the opinion means that the
University could file a motion to change the count, not simply that it could
again seek to file the motion. Even assuming the court's language was
imprecise, the remedy would have been to seek clarification from the court.
Even assuming we could clarify the court's language on our own, DePuy
should have obtained this ruling before the University's motion was filed.
The University's contention cannot be reconciled with the relief that it
sought and obtained from the court. If the board should properly enter
judgment against DePuy on patentability without reaching priority, then
there was no need for a remand for the University to file a motion to change
the count. Even assuming the University's suggested judgment might have
been a proper outcome, the choice was foreclosed by the court's direction in
its opinion. Again, even if the court erred in its direction, the remedy would
have had to come from them, not us.
III. PRIORITY
The University's motion for priority was contingent on the grant of its
motion to change the count.71 The contingency has not been met so we need
not reach the University's priority motion.

70 Univ. of S. Cal., App. No. 2011-1422, slip op. at 5.
71 Univ. Mot. 13 (Paper 144) at 1.
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DePuy's motion for priority does no more than rest on its constructive
reduction to practice date.72 A senior party need not prove priority unless
the junior party has established an earlier priority date.73 Accordingly, we
need not reach DePuy's motion.74

cc:

ROBERT BERLINER and MILES YAMANAKA, Berliner & Associates, of Los
Angeles, California.

BARRY E. BRETSCHNEIDER and MICHAEL E. ANDERSON, Baker & Hostetler
LLP, of Washington, D.C.

72 DePuy Mot. 6 (Paper 151) at 1.
73 Brown, 276 F.3d at 1332 (ultimate burden on junior party).
74 Genise v. Desautels, 73 USPQ2d 1393, 1395 (BPAI 2004) (not reaching
senior party case on failure of junior party case).