Lee v. McIntyre

This opinion is being published during the pendency of an	1
interference. Pursuant to 37 CFR § 1.14(d)(2), an applicant involved in
the interference objected to publication unless certain material is deleted
from the opinion. The material has been deleted as indicated by [***].
Identification of counsel has also been withheld. The complete opinion may be
published when the interference is terminated since a patent is involved in
the interference and the interference file becomes public at when the
interference is terminated. 37 CFR § 1.11(e).
The opinion in support of the decision being
entered today is binding precedent of the Trial Section	1
Paper 29
Filed by: Trial Section Motions Panel
Box Interference
Washington, D.C. 20231 Entered
Tel: 703-308-9797 16 March 2000
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
SHAU-TARNG LEE,
Junior Party,
(Patent 5,667,728),
v.
[***] McINTYRE [***],
Senior Party
(Application [***]).
_______________
Patent Interference No. 104,461
_______________
Before: STONER, Chief Administrative Patent Judge	,
McKELVEY, Senior Administrative Patent Judge	, and SCHAFER,
LEE and TORCZON, Administrative Patent Judges	.
McKelvey, Senior Administrative Patent Judge	.

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ORDER AUTHORIZING SUPPLEMENTAL PRELIMINARY MOTION PAPERS
The interference is before a Trial Section Motions Panel for
consideration of two issues. The first issue is whether Lee has
discharged an order to show cause why judgment should not be
entered against it. The second issue is whether supplemental
evidence and briefing should be authorized in connection with a
preliminary motion filed by McIntyre to substitute proposed
Count 2 for Count 1.
A. Order to show cause
1. Background
The interference involves a Lee patent and a McIntyre
application. There came a time during the interference when
times were set for taking action during the preliminary motion
phase of the interference (Paper 17). TIME PERIOD 1 within which
preliminary motions and preliminary statements were due was set
for 21 January 2000.
On 20 January 2000, McIntyre timely served and filed a
preliminary MOTION TO REDEFINE INTERFERING SUBJECT MATTER,
specifically to substitute proposed Count 2 for Count 1
(Paper 19). On the same day, McIntyre timely filed its
preliminary statement (Paper 20).
During a conference call on 4 February 2000 (Paper 21,
page 1), it came to the attention of the board that the

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interference file did not contain a preliminary statement by Lee.
During the conference call, it was represented by counsel for Lee
that a preliminary statement had been filed by fax on 27 January
2000. Lee was ordered to immediately fax a copy of the
preliminary statement to the board and counsel for McIntyre.
As of the time of the conference call, Lee was a junior
party without having timely filed a preliminary statement. Even
if Lee had filed a preliminary statement on 27 January 2000, the
preliminary statement would not have been timely. Accordingly,
Lee was placed under an order to show cause why judgment should
not be entered against it (Paper 21).
Lee faxed a copy of its preliminary statement to the board
on 4 February 2000. The preliminary statement contained a
certificate of mailing indicating that it was being transmitted
to the board via fax on 31 January 2000 (not 27 January 2000 as
had been represented during the conference call).
In due course, Lee filed a response (Paper 26) to the order
to show cause. It is alleged in the response that Lee "was
mistakenly of the opinion that *** [a] Settlement Agreement ***
[said to have] been reached in principle between the parties ***
would take the place of and supplant this Interference
proceeding" (Paper 26, page 2). According to counsel for Lee, it
was not until the conference call on 4 February 2000 that counsel

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for Lee understood that the settlement agreement did not suspend
the requirement for filing a preliminary statement.
2. Discussion
A junior party's failure to timely file a preliminary
statement can have serious consequences. Without a preliminary
statement, there is no basis upon which a junior party can
prevail on the issue of priority. If the junior party likewise
files no preliminary motion, as occurred in this case, then the
junior party is exposed to entry of judgment against it.
We believe that a party in an interference is well advised
not to assume that because settlement may have been reached that
it need not comply with times for taking action. Rather, the
party should either (1) comply with times set in the interference
or (2) request, or have its opponent request, entry of an adverse
judgment. In no case should a junior party assume that an
agreement "in principle" to settle somehow excuses the junior
party from filing a preliminary statement.
In this interference, Lee ultimately filed a preliminary
statement on 4 February 2000 (Paper 22). At that time, the only
matter pending before the board was McIntyre's preliminary
motion. An opposition had not yet been filed given that
oppositions were due on or before 11 February 2000. McIntyre did

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not serve its preliminary statement having not received a
preliminary statement from Lee.
While the case demonstrates that Lee did not pay close
enough attention to the times for taking action, it is manifest
that McIntyre did not suffer any actual prejudice by Lee's
untimely filing of its preliminary statement.
In light of the lack of actual prejudice, and our being
convinced that counsel for Lee is not likely to overlook in the
future a date for filing preliminary statements, we deem the
order to show cause to have been discharged.
While we have excused Lee's failure to timely file a
preliminary statement in this particular case, we wish to
emphasize the fact that involvement in settlement negotiations,
and even a high likelihood that settlement may occur, under no
circumstances excuses a party from meeting deadlines set by the
board. We make this point because the activities which took
place in this case are not a model for future behavior in other
cases. Compare Key Pharmaceuticals v. Hercon Laboratories Corp.	,
161 F.3d 709, 715-16, 48 USPQ2d 1911, 1916 (Fed. Cir. 1998) and
Hockerson-Halberstadt v. Converse Inc.	, 183 F.3d 1369, 1374 (Fed.
Cir. 1999). We may not be so charitable after this opinion is
published.

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3. Order
Upon consideration of the order to show cause (Paper 21),
Lee's response thereto (Paper 26), McIntyre's opposition
(Paper 27) and Lee's reply (Paper 28), it is
ORDERED that the order to show cause isdischarged.
FURTHER ORDERED that, at this time, a judgment shall
not be entered against Lee.
B. Preliminary motion to substitute a new count
1. Background
As noted earlier, the interference involves a patent of Lee
and an application of McIntyre.
The subject matter of the count involves a blowing agent for
making expanded polyolefin foams.
a.
Claim 1 of the Lee patent reads as follows (emphasis added):
A blowing agent for expanding an extrudable, expandable
polyolefin foam product, said blowing agent comprising
ethane and a different alkane selected from the group
consisting of C, C , C , C , C , and C hydrocarbons and	1 2 3 4 5 6
mixtures thereof, said ethane being present in said
blowing agent in an amount of at least about 40 percent
by weight based upon the total weight of said blowing
agent.

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An understanding of the scope of claim 1, however, requires a
consideration of Lee claim 2, which reads (emphasis added):
The blowing agent of claim 1 wherein said C	, C , C ,	1 2 3
C , C , and C alkanes are selected from the group	4 5 6
consisting of methane, fluorinated ethane, propane,
fluorinated propane, n-butane, isobutane, the pentanes,
the hexanes, and mixtures thereof.
b.
[***]
c.
Count 1, the sole count, reads:
A composition of matter according to claims 1 or 6 of
Lee '728,
or
a composition of matter according to claims 12 or 21 of
McIntyre [***].
As is readily apparent, Count 1 includes at least the
subject matter of Lee claim 1 and McIntyre claim 21. Not so
apparent, is the scope of those two claims, and hence, the scope
of Count 1.
(1)
The terms "hydrocarbon" and "alkane" have definite meanings
in organic chemistry. A hydrocarbon is "[a] compound consisting

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of carbon and hydrogen." Hackh's Chemical Dictionary	, page 418
(3d ed. 1944). An "alkane" is "[a] group of aliphatic
hydrocarbons, CH ; cf. the methane series." Id. at 32.	n 2n+2
In our opinion, the words "alkane" and "hydrocarbon" in Lee
claim 1 are ambiguous. In the context of the specification and
certain dependent claims, the word "alkane" in Lee claim 1
seemingly cannot really mean "aliphatic hydrocarbon" and the word
"hydrocarbon" seemingly cannot really mean hydrocarbon. Rather,
both terms include fluoro-substituted hydrocarbons, i.e.,
compounds having carbon, hydrogen and fluorine atoms. One need
only consult the specification (col. 7, lines 29-39) and Lee
dependent claim 2 to confirm the meaning of alkane and
hydrocarbon as used in Lee claim 1. Since Lee dependent claim 2
should be construed to include all the limitations of Lee
independent claim 1, it follows that certain fluoro-substituted
alkanes fall within the scope of Lee claim 1.
Accordingly, a proper construction of the scope of Lee
claim 1 is as follows:
A blowing agent for expanding an extrudable, expandable
polyolefin foam product, said blowing agent comprising
ethane and a different alkaneor fluoro-substituted
alkane selected from the group consisting of C	, C , C ,	1 3 4
C , and C hydrocarbons and C and C fluoro-substituted	5 6 2 3
hydrocarbons and mixtures thereof, said ethane being
present in said blowing agent in an amount of at least

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about 40 percent by weight based upon the total weight
of said blowing agent.
We wish to emphasize that we have not read limitations
from the specification into Lee claim 1. Rather, we simply have
construed Lee claim 1 in light of the specification and Lee
dependent claim 2.
(2)
[***]
2. Discussion
a.
We now come to the sole preliminary motion filed in
the interference. McIntyre has moved to substitute proposed
Count 2 for Count 1. 37 CFR § 1.633(c)(1) [Rule 633(c)(1)]. In
order to succeed on its motion, McIntyre was required to comply
with the provisions of 37 CFR § 1.637(c)(1) [Rule 637(c)(1)],
which as applied to the facts of this case reads:
(c) A preliminary motion under § 1.633(c) shall
explain why the interfering subject matter should
be redefined.
(1) A preliminary motion seeking to ***
substitute a count shall:
(i) Propose each count to be ***
substituted.
***

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(iv) Designate the claims of any patent
involved in the interference which
define the same patentable invention as
each proposed count.
(v) Show that each proposed count defines a
separate patentable invention from every
other count proposed to remain in
the interference.
McIntyre's proposed Count 2 is identical to McIntyre
claim 21. According to its preliminary motion, McIntyre has
complied with all relevant requirements of Rule 637(c)(1). A
close reading of Rule 637, as a whole, will show that McIntyre
did not meet all the requirements.
McIntyre did propose a new count. Rule 637(c)(1)(i).
McIntyre sought to have all the Lee patent claims designated as
corresponding to proposed Count 2. Rule 637(c)(1)(iv). Indeed,
all of the Lee patent claims include the subject matter of
proposed Count 2. Accordingly, if McIntyre were to prevail on
priority on the basis of proposed Count 2, all the Lee claims
would be unpatentable. 35 U.S.C. § 102(g). McIntyre was not
required to show that proposed Count 2 is patentably distinct for
Count 1 given that proposed Count 2 was to be substituted from
Count 1. Rule 637(c)(1)(v).
Overlooked by McIntyre is the requirement of Rule 637(c)
that a moving party "shall explain why the interfering subject

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matter should be redefined." Basically, McIntyre was under some
obligation to explain why the count should be made narrower than
a Lee claim to be designated as corresponding to the count.
b.
Lee's opposition to the McIntyre preliminary motion also
misses the mark. According to Lee, the count should be
sufficiently broad to encompass the broadest corresponding
patentable claim of each party (Paper 25, page 2). In the
abstract, it may be difficult to quarrel with the argument made
by Lee. The devil is in the details and it should be manifest to
all that there is no per se rule that the count ultimately must
be as broad as the broadest patent claim designated as
corresponding to the count. During the course of an
interference, a count may be narrowed to exclude patentable
subject matter within the scope of a claim designated as
corresponding to the count where the claim is directed to more
than one patentable invention.
In support of its argument, Lee cites and relies on	Heymes
v. Takaya, 6 USPQ2d 1448 (Bd. Pat. App. & Int. 1988). According
to Heymes:
[w]e agree with Takaya that *** [it] is entitled to a
count which is broad enough to encompass Takaya's
broadest patentable claim which is designated as
corresponding to the count. Indeed, Takaya's position

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is a fundamental principle in interference practice, as
is set forth in the MPEP, § 2309.01 "Formulation of
Counts", where three principles are set forth for the
formulation of counts. The second principle reads as
follows:
A count should normally be sufficiently broad as
to encompass the broadest corresponding patentable
claim of each of the parties.
6 USPQ2d at 1450.
For a variety of reasons, we disagree with, and decline to
follow, Heymes which in any event is not binding precedent of
this board.
Initially, we note the MPEP states "normally." Hence, even
under the then existing MPEP provisions, there was no	per se rule
that a count must be as broad as the broadest patentable claims
designated as corresponding to the count.
The Heymes panel seems to have overlooked the word
"normally" in the language used in the MPEP in holding that
"Takaya *** is entitled to a count which is broad enough to
encompass Takaya's broadest patentable claim which is designated
as corresponding to the count." It appears that Lee has also
given the MPEP provision too narrow a reading.
The relevant regulations make it manifest thatHeymes and
Lee overstate the applicable principles. Rule 606 [37 CFR
§ 1.606] includes the following (emphasis added):

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At the time an interference isinitially declared
(§ 1.611), a count shall not be narrower in scope
than any application claim that is patentable over the
prior art and designated to correspond to the count or
any patent claim designated to correspond to the count.
Any single patent claim designated to correspond to the
count will be presumed, subject to a motion under
§ 1.633(c), not to contain separate patentable
inventions.
It is only at the time that an interference is declared that
the count will be as broad as the broadest patentable claim of an
application designated as corresponding to a count and as broad
as the broadest claim of a patent designated as corresponding to
the count.
In the Notice of Final Rule, Patent Interference
Proceedings, 40 Fed. Reg. 48416, 48420 (Dec. 12, 1984), the
Commissioner notes:
Under § 1.606, at the time an interference is declared
between a patent and an application, a count would not
be narrower in scope than any patent claim which
corresponds to the count. Thus, a patent claim would
be presumed, subject to a motion under § 1.633(c), not
to embrace "separate patentable inventions."
In this case, the broadest Lee patent claim and McIntyre
application claim were designated as corresponding to Count 1.
Here, however, McIntyre apparently seeks to overcome the

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presumption that the initial count is limited to a single
patentable invention. Accordingly, the count should be narrowed
only if McIntyre can establish that Lee claim 1 is directed to
more than one separate patentable invention (37 CFR § 1.601(n)).
In this respect, attention is direct to the Notice of Final
Rule, 49 Fed. Reg. at 48421, wherein the following two examples
are provided (bold added):
Example 17: It will be the practice of the PTO
under § 1.606 to initially declare interferences with
counts which are identical to or broader than patent
claims which correspond to the counts. A single patent
claim would be presumed, subject to a motion under
§ 1.633(c), not to define separate patentable
inventions. Patent G contains claims 1 (Markush group
of benzene or chloroform), 2 (benzene), and 3
(chloroform). Application AA contains patentable claim
33 (benzene). If an interference is declared,
initially it would be presumed by the PTO, subject to a
later motion under § 1.633(c), that benzene and
chloroform define the same patentable invention. There
would be one count (Markush group of benzene or
chloroform). Claims 1, 2, and 3 ofpatent G and claim
33 of application AA would be designated to correspond
to the count. If a party believes benzene and
chloroform define separate patentable inventions, that
party could file a motion under § 1.633(c) to redefine
the count and the claims corresponding to the counts.

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Example 18: Patent H contains claims 1 (Markush
group of benzene or chloroform), 2 (benzene), and 3
(chloroform). Application AB contains patentable
claims 11 (Markush group of benzene or chloroform), 12
(benzene), and 13 (chloroform). Benzene and chloroform
initially would be presumed, subject to a motion under
§ 1.633(c), to define the same patentable invention,
because they are recited as a Markush group in a single
patent claim. If an interference is declared, there
would be one count (Markush group of benzene or
chloroform). Claims 1, 2, and 3 ofpatent H and claims
11, 12, and 13 of application AB would be designated to
correspond to the count. If a party believes benzene
and chloroform define separate patentable inventions,
the party could move under § 1.633(c) to substitute a
count (benzene) for (Markush group of benzene or
chloroform) and to add a count (chloroform).
The scope of the count determines the admissible evidence on
the issue of priority. Case v. CPC International, Inc.	, 730 F.2d
745, 749, 221 USPQ 196, 199 (Fed. Cir. 1984) (count determines
scope of relevant evidence on issue of priority);	Squires v.
Corbett, 560 F.2d 424, 433, 194 USPQ 513, 519 (CCPA 1977) (count
is merely a vehicle for contesting priority and determines what
evidence is relevant on the issue of priority). Lee does not
maintain that its best priority proofs are outside the scope of
McIntyre claim 21, but otherwise within the scope of Count 1.

In our view, Heymes is not consistent with the views expressed in the	2
Commissioner's decision as reproduced inGodtfredsen.
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Relevant to the issue in this case is a discussion in a
decision of the Commissioner, reproduced in part in	Godtfredsen
v. Banner, 598 F.2d 589, 592, 202 USPQ 7, 10 (CCPA 1979):
Where, as here, the parties both disclose the same
three species, that fact does not justify including
those species in a single count as member of a Markush
group if the Examiner has determined that the three
species are patentably distinct inventions. If such a
count were permitted, then the party who proved the
earliest date of invention as to any one of the members
of the group would be awarded priority as to the entire
count, i.e., as to all three members. It is not
considered that such a result would be consonant with
the primary purpose of an interference or with the
intent of 35 U.S.C. 135, since there would be no
determination of priority as toeach of the common
[patentably distinct] inventions claimed by the parties
[emphasis in original].2
Theeuwes v. Bogentoft, 2 USPQ2d 1378 (Comm'r Pat. 1986), not
cited by Lee, is not to the contrary. Nothing in	Theeuwes
suggests that a count cannot be narrowed so as to be limited to a
single patentable invention and thereby exclude from its scope a
second patentably distinct invention. The same is true of the
Commissioner's decision inDavis v. Uke, 27 USPQ2d 1180, 1186-87

In the event a count is narrowed during an interference and a	3
patentee does not prevail on priority, presumably the patentee could seek to
recoup the non-involved subject matter claimed in its patent through reissue.
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(Comm'r Pat. & Tm. 1993). The count mentioned in the
Commissioner's Davis opinion was an original count.	3
c.
The difficulty with the McIntyre preliminary motion and the
Lee opposition is that neither come to grips with the argument
which is most relevant under the circumstances. Why should the
count be limited? Or, in the words of Rule 637(c), McIntyre has
not explained "why the interfering subject matter should be
redefined" and Lee has not explained why it should not be
redefined.
[***]
d.
It is not clear to us that the language "explain why the
interfering subject matter should be redefined" in Rule 637(c)
has previously been construed in a published opinion.
Accordingly, in an effort to avoid denying McIntyre's preliminary
motion on a technicality, we elect to permit McIntyre to
supplement its preliminary motion and to permit Lee to supplement
its opposition. The issue to be addressed is whether Lee's
claim 1 defines more than one separate patentable invention.

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If it does, then perhaps the McIntyre preliminary motion could be
granted. On the other hand, if McIntyre cannot sustain its
burden of proof, then the McIntyre preliminary motion should be
denied.
3. Order
Upon consideration of McIntyre's MOTION TO REDEFINE
INTERFERING SUBJECT MATTER (Paper 19), it is
ORDERED that on or before14 April 2000, McIntyre is
authorized to supplement its preliminary motion.
FURTHER ORDERED that on or before10 May 2000, Lee is
authorized to supplement its opposition to McIntyre's preliminary
and supplementary preliminary motion.
FURTHER ORDERED that on or before24 May 2000, McIntyre
may file a reply.

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FURTHER ORDERED that the preliminary motion, as
supplemented, will be decided without a hearing.
______________________________
BRUCE H. STONER, Jr., Chief )
Administrative Patent Judge )
)
)
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
) BOARD OF PATENT
______________________________) APPEALS AND
JAMESON LEE ) INTERFERENCES
Administrative Patent Judge )
)
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )