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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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Which Specification Do You Use For Claim Construction in an Interference? 

Agilent Techs., Inc. v. Affymetrix, Inc. (Fed. Cir. Jun. 4, 2009)

In this case, the district court (Northern District of California) awarded priority to Affymetrix in an interference between Agilent and Affymetrix brought under 35 U.S.C. § 146. The Federal Circuit, in an opinion by Judge Rader, reversed.

The disputed claims pertained to "microarray hybridization," which is a technique for performing multiple genetic analyses on a small fluid sample. After Agilent's patent on this technology issued on February 4, 2003, Affymetrix, believing it had earlier invented the claimed methods, copied Agilent's claims into one of its applications to provoke an interference between the parties. Before the Board of Patent Appeals and Interferences (BPAI), Agilent argued that Affymetrix's application did not describe the invention adequately under 35 U.S.C. § 112 ¶ 1 to show actual possession of the invention. Both the BPAI, and the district court awarded priority to Affymetrix.

The main issue in this case was: which party's specification should control when construing the claims at issue for purposes of written description under 35 U.S.C. § 112 ¶ 1? The written description analysis focused on Affymetrix's specification, but the claims themselves originated from Agilent's patent (and were then copied by Affymetrix into one of its applications).

The Federal Circuit examined two of prior decisions relating to this issue: In re Spina and Rowe v. Dror. In Spina, the applicant copied a claim from another patent to provoke an interference. The Federal Circuit, in considering whether Spina's specification contained an adequate written disclosure for the claim, held that "[w]hen interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context from which it was copied." Similarly, in Rowe, the applicant (Rowe) copied claims from Dror's patent to provoke an interference. The issue in Rowe was whether a third-party patent anticipated Rowe's claims corresponding to the interference count. The Federal Circuit held that "where the issue is whether the claim is patentable to one or the other party in light of prior art ... this court must interpret the claim in light of the specification in which it appears."

So, in the case of Spina, the specification used to interpret the claims was not Spina's specification, but in Rowe, the specification used to interpret the claims was Rowe's specification. The Court here found that the present facts called for application of the Spina rule, due to the fact that the issue was adequate written description and not anticipation.

In response, Affymetrix pointed to 37 C.F.R. § 41.200(b), which provides: "A claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears." This regulation was not in effect at the time of the Spina decision. However, the Federal Circuit recognized that "administrative regulations cannot trump judicial directives."

To summarize, the Federal Circuit provided that "when a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language. When a party challenges a claim's validity under § 102 or § 103, however, this court and the Board must interpret the claim in light of the specification in which it appears."

Ultimately, the Federal Circuit performed an analysis of the relevant claim language using the correct specification, reversed the district court's construction, and reversed the district court's decision, thereby awarding priority to Agilent.

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