Chevron U.s.a. Inc. v. University of Wyoming Research Corporation, Dba Western Research Institute

United States Court of Appeals
for the Federal Circuit
______________________

CHEVRON U.S.A. INC.,
Appellant

v.

UNIVERSITY OF WYOMING RESEARCH
CORPORATION, DBA WESTERN RESEARCH
INSTITUTE,
Appellee
______________________

2019-1530
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board, in Interference
No. 106,064.
______________________

Decided: November 4, 2020
______________________

P
ATRICK JOSEPH COYNE, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Washington, DC, ar-
gued for appellant.

LUKE SANTANGELO, Santangelo Law Offices, PC, Fort
Collins, CO, argued for appellee. Also represented by
ALFRED K. WIEDMANN, JR.; WILBUR T. BAKER, CHARLES L.
GHOLZ, Oblon LLP, Alexandria, VA.
______________________

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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
2
Before NEWMAN, LOURIE, and SCHALL, Circuit Judges.
Opinion for the court filed by Circuit Judge SCHALL.
Dissenting opinion filed by Circuit Judge NEWMAN.
SCHALL, Circuit Judge.
DECISION
This is an appeal from the Patent Trial and Appeal
Board’s (“Board”) Decision on Motions under 37 C.F.R.
§ 41.125 (“Decision on Motions”) and from the Board’s
Judgment under 37 C.F.R. § 41.127(a) in Interference No.
106,064.
1
J.A. 6–41; J.A. 46–49. We have jurisdiction pur-
suant to 28 U.S.C. § 1295(a)(4)(A) (2000) and 35 U.S.C.
§ 141 (2002). For the reasons stated below, we affirm.
B
ACKGROUND
The University of Wyoming Research Corporation,
d/b/a Western Research Institute (“Wyoming”), is the
owner of U.S. Patent No. 8,367,425 (“the ’425 patent”). The
’425 patent is directed to a procedure whereby (1) solvents
of increasing strength are successively passed over asphal-
tenes that have been segregated in a packed column from
a hydrocarbon such as oil; and (2) amounts of asphaltenes
dissolved and eluted from the column by the various

1
The Leahy-Smith America Invents Act, Pub. L. No.
112-29, 125 Stat. 284 (2011) (“AIA”) eliminated interfer-
ence proceedings and established derivation proceedings.
AIA § 3, 125 Stat. 285–93; Biogen MA, Inc. v. Japanese
Found. for Cancer Research, 785 F.3d 648, 654 (Fed. Cir.
2015). However, the ’814 application was filed before the
amendments made by AIA § 3 went into effect on March
16, 2013. Accordingly, the earlier version of the patent
statute governs the activities in this case. AIA § 3(n)(1),
125 Stat. at 293; Tobinick v. Olmarker, 753 F.3d 1220, 1223
n.1 (Fed. Cir. 2014).
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
3
solvents yield information about the oil. See ’425 patent
Abstract & col. 12 ll. 53–65. The Board defined the single
count of the interference as claim 1 of Chevron U.S.A. Inc.’s
(“Chevron”) U.S. Patent Application No. 12/833,814 (“the
’814 application”) or claim 5 of the ’425 patent, which Wyo-
ming had copied from Chevron in order to provoke an in-
terference (“the Count”). Claim 1 of the ’814 application
reads as follows:
1. A method for determining asphaltene stability
in a hydrocarbon-containing material having solv-
ated asphaltenes therein, the method comprising
the steps of:
(a) precipitating an amount of the asphaltenes
from a liquid sample of the hydrocarbon-containing
material with an alkane mobile phase solvent in a
column;
(b) dissolving a first amount and a second amount
of the precipitated asphaltenes by gradually and
continuously changing the alkane mobile phase sol-
vent to a final mobile phase solvent having a solu-
bility parameter at least 1 MPa
0.5
higher than the
alkane mobile phase solvent;
(c) monitoring the concentration of eluted fractions
from the column;
(d) creating a solubility profile of the dissolved as-
phaltenes in the hydrocarbon-containing material;
and
(e) determining one or more asphaltene stability
parameters of the hydrocarbon-containing mate-
rial.
Decision on Motions at 3, J.A. 8 (emphasis in original, ad-
ditional emphases removed).
Relevant to this appeal, the Board construed the terms
“gradually” and “continuously” in the limitation “gradually
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
4
and continuously changing the alkane mobile phase sol-
vent to a final mobile phase solvent” as follows: The Board
construed “gradually” to mean that “the alkane mobile
phase solvent is incrementally removed from the column
over a period of time by continuously adding a final mobile
phase solvent.” Id. at 10, J.A. 15. The Board construed
“continuously” to mean “without interruption.” Id. at 8,
J.A. 13. Based upon these constructions, the Board held
that Wyoming’s ’425 patent had adequate written descrip-
tion for this Count limitation. Id. at 12–14, 17, J.A. 17–19,
22. The Board further held that Wyoming was entitled to
the benefit of the earlier filing dates of two patent applica-
tions, U.S. Provisional Application 60/711,599 (Aug. 25,
2005), and follow-up U.S. Nonprovisional Application
11/510,491 (Aug. 25, 2006) (collectively, “the priority appli-
cations”). Id. at 35, J.A. 40. Because Chevron had filed a
Priority Statement that indicated its earliest corroborated
conception coupled with diligence date was March 1, 2009,
the Board determined that Chevron was unable to prevail
on priority. Id.; Judgment at 2, J.A. 47. Accordingly, the
Board assigned Wyoming status as senior party and en-
tered judgment in its favor in the interference. Judgment
at 2–3, J.A. 47–48.
D
ISCUSSION
I.
On appeal, Chevron argues that the Board erred be-
cause it should have construed the limitation “gradually
and continuously changing the alkane mobile phase sol-
vent to a final mobile phase solvent” to mean that “the
amount of alkane mobile phase solvent fed into the column
is incrementally decreased from 100% to 0% over a period
of time without interruption while the amount of final mo-
bile phase solvent fed into the column is incrementally in-
creased from 0% to 100% over the same period of time.”
Appellant’s Br. 10–15, 44–56; see Decision on Motions at 9,
J.A. 14. This is the same construction Chevron urged
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
5
before the Board. See Interference No. 106,064, Chevron
Mot. 1 (Lack of Written Description and Enablement) (Mar.
2, 2017) at 6–7, J.A. 405–06. For its part, Wyoming argues
that the Board properly construed the limitation to mean
that “the alkane mobile phase solvent is incrementally re-
moved from the column over a period of time by continu-
ously adding a final mobile phase solvent.” Appellee’s Br.
18–35. Neither Chevron nor Wyoming argues that the
Board erred in construing the term “continuously” to mean
“without interruption.”
Chevron’s appeal presents us with only one, narrow is-
sue: whether the Board erred in its construction of the lim-
itation “gradually and continuously changing the alkane
mobile phase solvent to a final mobile phase solvent.” This
is so for two reasons: first, because it is the only claim lim-
itation the parties dispute; and second, because the parties
are in agreement that Wyoming’s ’425 patent and the pri-
ority applications have written description support for the
limitation under the Board’s construction, but that they
lack such support under the construction urged by Chev-
ron. In other words, the parties concur that if we agree
with the Board’s construction of “gradually,” we must af-
firm, whereas if we conclude that the Board erred, we must
reverse.
II.
We review the Board’s decisions for compliance with
the Administrative Procedure Act. Rovalma, S.A. v.
Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1024
(Fed. Cir. 2017). Where, as here, the intrinsic record fully
governs the proper construction of a claim term, we review
the Board’s claim construction de novo. In re Power Inte-
grations, Inc., 884 F.3d 1370, 1375 (Fed. Cir. 2018).
Because Wyoming copied claim 1 of Chevron’s ’814 ap-
plication to provoke the interference, we give the claim its
broadest reasonable construction in light of the ’814 appli-
cation’s specification. ULF Bamberg v. Dalvey, 815 F.3d
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
6
793, 796 (Fed. Cir. 2016) (“Because this is an interference,
and Bamberg copied Dalvey’s claims, we give the claims
their broadest reasonable construction in light of the
Dalvey specification.”). “Under the broadest reasonable in-
terpretation, the Board’s construction cannot be divorced
from the specification and the record evidence, and must be
consistent with the one that those skilled in the art would
reach.’’ Id. (brackets and citation omitted).
III.
The Board recognized that the disputed claim term,
“gradually,” had to be construed in the context of the ’814
application’s specification. See ULF Bamberg, 815 F.3d at
796. Although the Board had before it the testimony of
both Chevron’s expert, Dr. Lante Carbognani, and Wyo-
ming’s expert, Dr. Vladislav Lobodin, as to the meaning of
the limitation “gradually and continuously changing,” De-
cision on Motions at 8–10, J.A. 13–15, it declined to resort
to this extrinsic evidence. Instead, it rested its construc-
tion of the “gradually and continuously changing” limita-
tion on intrinsic evidence, specifically, the definition of
“gradually” appearing in ¶ 37 of the ’814 application’s spec-
ification:
The term gradually as used herein shall be under-
stood to mean that the alkane mobile phase solvent
is incrementally removed from the column over a
period of time by continuously adding a final mo-
bile phase solvent having a solubility parameter at
least 1 MPa
0.5
higher than the alkane mobile phase
solvent to the column.
J.A. 682–83.
The Board explained that “[a]s we cannot rely on the
plain meaning of gradually (given the definition given in
the specification) we conclude that ‘gradually,’ therefore,
for purposes of this decision means that ‘the alkane mobile
phase solvent is incrementally removed from the column
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
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over a period of time by continuously adding a final mobile
phase solvent.’” Decision on Motions at 10, J.A. 15. Thus,
the Board rejected Chevron’s argument that “gradually
and continuously changing” refers to the act of feeding al-
kane mobile phase solvent into the inlet of the column. See
Chevron Mot. 1 at 6–7, J.A. 405–06. Instead, it concluded
that “gradually and continuously changing” refers to the
change of solvents in the column, not at the inlet to the col-
umn. Decision on Motions at 12, J.A. 17 (“[G]radually is a
term of degree and not specifically defined as a specific in-
put change, but rather on the removal of one solvent by the
addition of another, which is not quite the same.”).
IV.
Chevron argues that the Board’s construction of “grad-
ually and continuously changing” is inconsistent with the
specification of the ’814 application, and is, therefore, un-
reasonable under our decision in In re Suitco Surface, Inc.,
603 F.3d 1255 (Fed. Cir. 2010). Appellant’s Br. 44–51. This
is so, Chevron asserts, because the specification discloses
that the solvent is “gradually and continuously” changed at
the inlet to the column. Id. at 46–51 (citing the ’814 appli-
cation at ¶¶ 31, 37–40, J.A. 681–84); Oral arg. 00:45–01:45,
08:00–08:45 (June 2, 2020), available at http://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=19-1530.mp3, (cit-
ing the ’814 application at ¶¶ 37–41, J.A. 682–84).
Chevron also contends that the Board improperly took into
account extrinsic evidence through its consideration of tes-
timony by Dr. Lobodin regarding testing he performed. Ap-
pellant’s Br. 51–53. Next, Chevron argues that the Board
construed the terms “gradually” and “continuously” sepa-
rately, divorced from the context of the claim. Id. at 53–55.
Last, citing Haemonetics Corp. v. Baxter Healthcare Corp.,
607 F.3d 776, 781 (Fed. Cir. 2010) and Bicon, Inc. v. Strau-
mann Co., 441 F.3d 945, 951 (Fed. Cir. 2006), Chevron as-
serts that the Board’s construction encompasses even
sudden, abrupt immediate solvent switches, thereby ren-
dering the limitation meaningless. Id. at 55–56.
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
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Wyoming responds that, unlike in Suitco, here the ’814
application itself specifically and unambiguously provides
a definition (of “gradually”). It also responds that the
Board’s construction is “precisely the definition Chevron
provided in its specification,” and that Dr. Lobodin’s testing
“only confirm[ed] . . . that even Wyoming’s abrupt, single-
step solvent transition at column inlet yielded ‘incremen-
tal[ ] remova[al] [of the alkane solvent] from the column.’”
Appellee’s Br. 22; see id. at 21–24. Wyoming notes that the
examples Chevron relies on as supporting “gradually and
continuously changing” at the column inlet expressly state
that the solvents are “gradually and continuously added,”
not “gradually and continuously chang[ed],” as required by
the claim. Wyoming reasons that this further supports the
Board’s construction that it is solvent in the column that is
“changed.” Id. at 28–31. In addition, Wyoming disagrees
that the Board improperly construed “gradually” and “con-
tinuously” separately, pointing out that the Board’s con-
struction of “gradually” requires “continuously adding a
final mobile phase solvent.” Id. at 33–36. Last, while ren-
dering claim terms “superfluous” or meaningless may be
“disfavored,” Wyoming contends that the express definition
set forth in the ’814 application controls. Id. at 36–39.
V.
We agree with Wyoming that the Board did not err in
construing the “gradually and continuously changing” lim-
itation.
Paragraphs 37–41 of the ’814 application, upon which
Chevron relies, do not persuade us that the broadest rea-
sonable construction of the “gradually and continuously
changing” limitation requires a change of solvents at the
inlet to the column. First and most significantly, ¶ 37 of
the ’814 application, upon which the Board relied, provides
an express definition of “gradually.” That definition re-
quires “incremental[] remov[al]” and “continuous[] add-
ing.” As noted above, ¶ 37 states:
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
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The term gradually as used herein shall be under-
stood to mean that the alkane mobile phase solvent
is incrementally removed from the column over a
period of time by continuously adding a final mo-
bile phase solvent having a solubility parameter at
least 1 MPa
0.5
higher than the alkane mobile phase
solvent to the column.
J.A. 682–83. Paragraphs 38 and 40 of the ’814 application
provide examples of “gradually and continuously add[ing]”
final mobile phase solvents at the inlet of a column until
the solvent “in the column” is 100% final mobile phase sol-
vent. Thus, ¶¶ 38 and 40 illustrate that one way to imple-
ment a “gradual[ ] and continuous[ ] chang[e]” of the
solvent in the column is by “gradually and continuously
add[ing]” a final mobile phase solvent. Paragraph 37 of the
’814 application explains that “[g]enerally, gradually and
continuously changing” “can occur” during certain specified
time periods. Paragraph 39 describes adding a second final
mobile phase solvent to provide a more accurate solubility
profile of the dissolved asphaltenes, while ¶ 41 is a single
sentence that states that the “flow rate and time period”
for “gradually and continuously adding” the second final
mobile phase solvent “are substantially the same as for the
first final mobile phase solvents.” J.A. 682–84.
Accordingly, while ¶¶ 38–41 provide examples of
“gradually and continuously changing” that is accom-
plished by “gradually and continuously add[ing]” solvents
to a column, and provide potential time frames for “gradu-
ally and continuously changing,” or “gradually and contin-
uously adding,” we do not read these paragraphs to require
that the claimed “chang[ing]” be limited to occurring at the
column’s inlet. This is particularly true given the language
used in the express definition of “gradually” set forth in
¶ 37.
We do not think that our decision in Suitco requires a
different result. In Suitco, we disagreed with the Board’s
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
10
broadest reasonable construction of the term “finishing the
top surface of the floor,” because the Board’s construction
“allow[ed] the finishing material to fall anywhere above the
surface being finished regardless of whether it actually ‘fin-
ishes’ the surface.” 603 F.3d at 1260. We held this con-
struction to be unreasonably broad because “the express
language of the claim and the specification require[d] the
finishing material to be the top and final layer on the sur-
face being finished.” Id. Here, the “express language” of
the specification “requires” that the term “gradually” “shall
be understood to mean that the alkane mobile phase sol-
vent is incrementally removed from the column over a pe-
riod of time by continuously adding a final mobile phase
solvent . . . .” J.A. 682–83 (emphasis added). It is this defi-
nition that the Board tracked verbatim in its construction.
We also do not think that the Board improperly consid-
ered extrinsic evidence in construing the “gradually and
continuously changing” limitation. Although the Board
cited expert testimony from both parties when it set forth
the parties’ claim construction arguments, the Board
stated it “[saw] no persuasive reason . . . to deviate from
the intrinsic evidence in this situation.” Decision on Mo-
tions at 10, J.A. 15; see also id. at 34, J.A. 39 (stating that,
in construing the “gradually and continuously” term, the
Board “strictly relied upon the intrinsic evidence in
the . . . specification [of the ’814 application]”). The Board
referred to Dr. Lobodin’s testimony regarding testing
simply to confirm its understanding of the fluid dynamics
in the column as part of its determination that Wyoming’s
’425 patent had adequate written description for the “grad-
ually and continuously changing” limitation. See id. at 11–
12, J.A. 16–17.
In addition, in view of the express definition provided
in the specification, we do not think that the Board erred
when it construed “gradually” and “continuously” sepa-
rately. As noted above, the ’814 application defined “grad-
ually,” an adverb generally used to describe a pace at which
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
11
something is performed, “[to] be understood to mean that
the alkane mobile phase solvent is incrementally removed
from the column over a period of time by continuously add-
ing a final mobile phase solvent.”
Finally, we are not persuaded that Haemonetics and
Bicon require a different result. In Haemonetics, a district
court construed “centrifugal unit” to include “a plurality of
tubes” in the preamble of the claim, but to exclude “a plu-
rality of tubes” in the body of the claim. 607 F.3d at 780.
The district court reasoned that including the tubing in the
context of limitations directed to the centrifugal unit’s
physical dimensions recited in the body of the claim “would
yield an absurdity.” 607 F.3d at 780 (quoting Haemonetics
Corp. .v Baxter Healthcare Corp., 517 F. Supp. 2d 514, 519
(D. Mass. 2007)). We held the court’s construction with re-
spect to the body of the claim to be erroneous. In so doing,
we noted that the specification described an embodiment
in which a centrifugal unit was described both as including
a plurality of tubes and as satisfying the dimensional limi-
tations. Id. at 781–83. Similarly, in Bicon, we rejected the
patentee’s construction of a claim term that would render
claim terms meaningless, noting that the construction was
“contrary to the specification.” 441 F.3d at 951. In sum, in
both Haemonetics and Bicon we corrected claim construc-
tions that were inconsistent with the patent’s specification.
Here, as discussed above, the Board’s construction is con-
sistent with, and indeed tracks a verbatim definition set
forth in, the ’814 application.
C
ONCLUSION
For the foregoing reasons, we conclude that the Board
did not err in its construction of the Count’s “gradually and
continuously changing” limitation. We therefore affirm the
Board’s judgment in the interference in favor of Wyoming.
AFFIRMED
Case: 19-1530 Document: 57 Page: 11 Filed: 11/04/2020

United States Court of Appeals
for the Federal Circuit
______________________

CHEVRON U.S.A. INC.,
Appellant

v.

UNIVERSITY OF WYOMING RESEARCH
CORPORATION, DBA WESTERN RESEARCH
INSTITUTE,
Appellee
______________________

2019-1530
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 106,064.
______________________

N
EWMAN, Circuit Judge, dissenting.
This case concerns a patent “interference” proceeding,
conducted under the now-discontinued statute whereby the
patent for a commonly claimed invention is awarded to the
party who was the first to invent, rather than the first to
file the patent application. The interference is a trial-like
administrative proceeding in which the competing inven-
tors prove their dates of invention. Extensive precedent
evolved over the decades of this often complex procedure,
providing guidance for determination of the core priority
issues of conception, corroboration, reduction to practice,
and diligence.
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
2
Although the purpose of the first-to-invent rule was to
achieve fairness to inventors and relieve the pressure to
“race to the Patent Office,” interference proceedings were
expensive and time-consuming. In addition, the first-to-in-
vent policy was unique to the United States, presenting in-
ternational treaty concerns. Thus, the Leahy–Smith
America Invents Act abolished the principle of first-to-in-
vent and eliminated the accompanying interference pro-
ceedings, except for patent applications filed before the
effective date of March 16, 2013. Pub. L. 112–29, § 3(n)(2),
125 Stat. 284, 293 (2011). The case at bar is in that legacy
class.
The competing parties are Chevron U.S.A. Inc. (“Chev-
ron”) and the University of Wyoming Research Corporation
(“Wyoming”). Both Wyoming and Chevron were studying
the analysis of asphaltene impurities in crude oil, and the
parties developed different methods of analysis by solvent
extraction. Purification of crude oil has been much studied,
and the specifications of both parties list extensive prior
art. Each party’s method in this interference is described
in multi-page specifications with specific examples, explicit
data, and graphs.
Wyoming initiated the interference by copying into its
pending application the claims from a pending Chevron ap-
plication. The Patent Trial and Appeal Board (“Board”)
conducted the interference proceeding and awarded prior-
ity of invention to Wyoming,
1
leading to this appeal.
As I shall discuss, the Board erred. The Wyoming spec-
ification does not describe and does not support the claims
copied from Chevron. In its chain of applications Wyoming
describes and claims a different method. Wyoming’s only

1
Schabron [Wyoming] v. Rogel [Chevron], Patent In-
terference No. 106,064, 2018 WL 6573279 (P.T.A.B. Dec.
11, 2018) (“Board Op.”).
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
3
mention of the Chevron method is in the claims that Wyo-
ming copied from Chevron. In the absence of any descrip-
tion of the Chevron method, Wyoming’s applications
cannot establish conception and constructive reduction to
practice
2
of the Chevron method.
No Wyoming inventor asserted conception or reduction
to practice of the Chevron method, and no testimonial or
documentary evidence was offered. Wyoming relies en-
tirely on its earlier-filed specifications, which describe only
the different Wyoming method. As summarized in Ariad
Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336
(Fed. Cir. 2010) (en banc), the test is whether the priority
application “convey[ed] to those skilled in the art that the
inventor had possession of the claimed subject matter as of
the filing date.” Id. at 1351 (citing Ralston Purina Co. v.
Far–Mar–Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)).
The Board erred in law and fact. From the majority’s
affirmance of the Board’s decision, I respectfully dissent.
D
ISCUSSION
For a patent interference to be “declared,” each compet-
ing party must describe and be entitled to claim the same
invention. A challenging party may copy into its applica-
tion the claims from another party’s application, when the
challenging party has the requisite support for the copied
claims. The Patent and Trademark Office (“PTO”) then de-
clares the interference and designates an interference
“Count” that states the common invention. The competing
parties then are tasked to prove their dates of invention of
the subject matter of the Count.

2
“Constructive reduction to practice means a de-
scribed and enabled anticipation under 35 U.S.C.
§ 102(g)(1), in a patent application of the subject matter of
a count.” 37 C.F.R. § 41.201.
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
4
Wyoming copied claims from Chevron’s U.S. Patent
Application No. 12/833,814 (“Chevron ’814 application”),
and informed the examiner, as required, that the claims
were copied for interference purposes. Wyoming then filed
a continuation application that included the copied claims,
and the examiner issued U.S. Patent No. 8,367,425 (“Wyo-
ming ’425 patent”) including the claims copied from Chev-
ron. The examiner also allowed Chevron’s claims in
Chevron’s ‘814 application, holding Chevron’s claims pa-
tentable over Wyoming’s application that had been cited as
prior art. The examiner then “declared” this interference.
The Board recited the Count of the interference as
Chevron’s claim 1 or Wyoming’s claim 5, as follows:
Chevron Claim 1. A method for determining as-
phaltene stability in a hydrocarbon-containing ma-
terial having solvated asphaltenes therein, the
method comprising the steps of:
(a) precipitating an amount of the asphaltenes
from a liquid sample of the hydrocarbon-con-
taining material with an alkane mobile phase
solvent in a column;
(b) dissolving a first amount and a second amount
of the precipitated asphaltenes by gradually
and continuously changing the alkane mobile
phase solvent to a final mobile phase solvent
having a solubility parameter at least 1 MPa
0.5

higher than the alkane mobile phase solvent;
(c) monitoring the concentration of eluted frac-
tions from the column;
(d) creating a solubility profile of the dissolved as-
phaltenes in the hydrocarbon-containing mate-
rial; and
(e) determining one or more asphaltene stability
parameters of the hydrocarbon-containing ma-
terial.
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
5
Wyoming Claim 5. The method of [Wyoming] claim
1, wherein said step of dissolving comprises the
step of dissolving by gradually and continuously
changing the alkane mobile phase solvent to a final
mobile phase solvent having a solubility parameter
that is at least 1 MPa
0.5
higher than the alkane mo-
bile phase.
Board Op. at *2 –3 (italics by Board “on terms disputed in
this proceeding”).
Each of the Wyoming and Chevron specifications con-
tains a detailed description of each party’s method, with
specific experimental examples, graphs, and data. Chev-
ron argued that Wyoming has no support for the “gradually
and continuously changing” limitation. The Board recog-
nized that Wyoming’s method differed in that Wyoming re-
quired an abrupt and discontinuous solvent change, but
the Board discarded the difference and awarded Wyoming
priority of the claims to Chevron’s method.
No Wyoming record describes a gradual and continu-
ous solvent change, and no Wyoming inventor asserted pos-
session of this concept of gradual and continuous solvent
change. No Wyoming specification mentions or suggests a
gradual and continuous solvent change. To the contrary,
the Wyoming specifications are explicit in their require-
ment of an abrupt and complete solvent change.
Chevron’s motion to dissolve the interference should
have been granted, for Chevron and Wyoming describe and
claim different inventions. There is no interference in fact;
I start with this aspect.
There is no interference in fact
The premise of the patent interference proceeding is
that the parties are entitled to claim the same invention.
See Jepson v. Coleman, 314 F.2d 533, 536 (C.C.P.A. 1963)
(“When one copies claims from a patent for the purpose of
instituting interference proceedings, in order to be
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6
successful, that person’s application must clearly support
those counts. There must be no doubt that an applicant
discloses each and every limitation of the claims and all
doubts must be resolved against the copier.”) (internal ci-
tation omitted); Goeddel v. Sugano, 617 F.3d 1350, 1357
(Fed. Cir 2010) (“The Board’s decision that the Japanese
Application constitutes constructive reduction to practice
of the subject matter of these interferences is not in accord-
ance with law, for the Japanese Application does not meet
the criteria of § 112, [the written description and enable-
ment requirements], as to this subject matter.”).
In Storer v. Clark, 860 F.3d 1340 (Fed. Cir. 2017), the
court again explained that the specification must contain
adequate written description and enablement for the sub-
ject matter of the Count. Id. at 1344–45. “When a party to
an interference seeks the benefit of an earlier-filed United
States patent application, the earlier application must
meet the requirements of 35 U.S.C. § 120 and 35 U.S.C.
§ 112 ¶ 1 for the subject matter of the count.” Id. (quoting
Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998)).
These requirements are plainly not met by Wyoming.
Indeed, the Board did not find otherwise; the Board simply
construed Chevron’s gradual and continuous solvent
change as somehow met by Wyoming’s abrupt and discon-
tinuous solvent change. However, priority of invention re-
quires proof of conception and reduction to practice of the
same invention, not of a different invention.
3

3
My colleagues on this panel hold that the “broadest
reasonable interpretation” of the term “gradually and con-
tinuously changing” includes the abrupt and complete sol-
vent switch of the Wyoming method, and that nothing more
is needed. The court now discards as “not controlling” our
uniform precedent that requires that the interference
count is construed in light of the application from which it
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7
The Board did acknowledge the major distinction that
Chevron gradually and continuously changes the solvent
while Wyoming abruptly and completely changes the sol-
vent. The Chevron specification defines “gradually” as fol-
lows:
The term gradually as used herein shall be under-
stood to mean that the alkane mobile phase solvent
is incrementally removed from the column over a
period of time by continuously adding a final mo-
bile phase solvent having a solubility parameter at
least 1 MPa
0.5
higher than the alkane mobile phase
solvent to the column.
Chevron ’814 application ¶ 37. Chevron’s specification de-
scribes that this gradual change of solvent is performed by
the continuous addition of the new solvent at the column
inlet. Id. at ¶¶ 37–38. Chevron’s specification elaborates
that “gradually and continuously changing from essen-
tially the alkane mobile phase solvent to the final mobile
phase solvent can occur during a period of about 5 minutes
to about 120 minutes at a flow rate of about 1 mL/min. to
about 4 mL/min.” Id. at ¶ 37. The Chevron specification
describes:
[A] first final mobile phase solvent . . . is gradually
and continuously added to the column to sequen-
tially change the alkane mobile phase solvent from
100% alkane mobile phase solvent to 100% first fi-
nal mobile phase solvent, i.e., the alkane mobile
phase solvent is changed to 1% dichloromethane in

arose; that is, Haemonetics Corp. v Baxter Healthcare
Corp., 607 F.3d 776, 781 (Fed. Cir. 2010) and Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006). Having
removed the restraints of precedent and logic, the court
holds that “gradual and continuous” includes abrupt and
discontinuous.
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CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH
8
99% alkane mobile phase solvent, then to 2% di-
chloromethane in 98% alkane mobile phase sol-
vent, until the mobile phase solvent in the column
is 100% dichloromethane and 0% alkane mobile
phase solvent.
Id. at ¶ 38. Chevron exemplifies this gradual and contin-
ual change of solvent with specific examples, and demon-
strates the method graphically and with specific data.
Chevron’s Figure 1 pictures the solubility profile that en-
sues from the gradual and continuous solvent change:

Id., Fig. 1. This profile is analyzed, in accordance with the
Chevron specification, to determine the asphaltene solubil-
ity parameters.
The Wyoming inventors were also studying the analy-
sis of asphaltenes by solvent extraction. However, Wyo-
ming describes a different method. Unlike Chevron’s
gradual and continual change of solvents, in the Wyoming
method the solvents are abruptly and completely changed.
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9
Wyoming calls this a “step gradient sequence,” described
as follows:
A more rapid method to measure asphaltene solu-
bility was explored using a novel on-column as-
phaltene precipitation and re-dissolution
technique. This was automated using high perfor-
mance liquid chromatography (HPLC) equipment
with a step gradient sequence using the solvents:
heptane, cyclohexane, and toluene:methanol (98:2).
Wyoming ’425 patent, col. 10, ll. 16–21. Wyoming describes
its method as a series of switches of solvent:
Once the sample solution enters the column with
the heptane mobile phase, the heptane displaces
and dilutes the injected solvent, and heptane insol-
uble materials precipitate. The soluble maltenes
continue to move with the heptane and they elute
from the column. The solvent is then switched to a
stronger solvent, or a series of stronger solvents of
increasing solvent strength, which dissolves a por-
tion or all of the precipitated material. The solvent
is then switched back to heptane in preparation for
the next sample injection.
Id., col. 13, ll. 46–55.
Wyoming states that its complete switches of solvent
are “important aspects to the separation.” Id., col. 14, ll.
43–54. Each successive Wyoming solvent displaces en-
tirely the solvent preceding it, and that complete separa-
tion between the solvents is necessary. Id., col. 8, ll. 33–46
(“[I]t is typically necessary to separate the existing dis-
solved material solution from a space contacting the gener-
ated material so that the subsequent solvent can then
dissolve at least an additional portion of the generated ma-
terial.”); see also id., col. 10, l. 16–col. 11, l. 4 (explaining
advantages of the Wyoming method of switching solvents).
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11
examples use solvent changes that are less so (Ex.
1001, ¶ 38).
Board Op. at *21. An abrupt solvent input change is not a
gradual and continuous change, on any theory of interfer-
ence priority. When claims are copied to provoke an inter-
ference, the copied claims are construed in light of the
application from which the claims are copied. See Agilent
Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed.
Cir. 2009) (“[W]hen a party challenges written description
support for an interference count or the copied claim in an
interference, the originating disclosure provides the mean-
ing of the pertinent claim language.”).
The Board recognized that Wyoming did not argue that
its specification described the Chevron method. However,
the Board undertook to fill that gap, the Board stating that
“the description discusses variables such as injection vol-
ume and column size, which at least in part we think inev-
itably would affect solvent residence times, and solvent
changeover times, in the column.” Board Op. at *9 (citing
Wyoming ’425 patent, col. 15, ll. 9–11). The Board’s specu-
lative “at least in part we think,” supra, is the only reason
presented for the Board’s ruling that Wyoming met the re-
quirements of conception, written description, enablement,
and reduction to practice of the interference Count.
Wyoming proved neither conception nor re-
duction to practice of the Count
The burden was on Wyoming, in its position as the cop-
ier of claims to provoke an interference, to establish that
the claims are patentable to it, and to establish priority of
invention with preponderant evidence of conception and re-
duction to practice. Interpretation of the claim selected as
the interference count must “correspond[] with what and
how the inventor describes his invention in the specifica-
tion.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed.
Cir. 2017).
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“Determining ‘inventorship’ is nothing more than de-
termining who conceived the subject matter at issue,
whether that subject matter is recited in a claim in an ap-
plication or in a count in an interference.” Sewall v. Wal-
ters, 21 F.3d 411, 415 (Fed. Cir. 1994). Wyoming offered no
evidence of any inventor’s conception of the “gradual and
continuous” method presented by Chevron, and it is not
disputed that the Wyoming specification contains no writ-
ten description and no enablement of a gradual and contin-
uous solvent change.
Interference priority requires proof of prior conception
followed by diligent reduction to practice of the common in-
vention. No Wyoming inventor asserted conception of the
method of the Count, nor asserted reduction to practice of
the invention of the Count. The Board recited, but then
bypassed the requirement that “[a] party seeking the ben-
efit of an earlier application must establish that the earlier
application is a ‘constructive reduction to practice’ of an
embodiment within the scope of the Count. It must also
satisfy both the written description and enablement re-
quirements of 35 U.S.C. § 112. See 37 C.F.R. § 41.202.”
Board Op. at *15. The Board did not apply these require-
ments.
C
ONCLUSION
The PTO erred at the threshold, in allowing Wyoming
to copy Chevron’s claims, in the absence of written descrip-
tion and enablement of the Chevron method of gradual and
continual change of solvent. Wyoming did not establish
conception and reduction to practice of the subject matter
of the Count, either constructively or through evidence.
The Board’s award of priority to Wyoming is contrary to
law. From my colleagues’ contrary view, I respectfully dis-
sent.
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