Robertson v. Timmermans, No. 2009-1222 (Fed. Cir. May 5, 2010).

The senior party provoked an interference with the junior party by copying the claims of the junior party’s patent into the senior party’s application. The junior party filed motions with the board arguing that the senior party’s claims were unpatentable for lack of a written description. In deciding the motions for lack of written description, the Board of Patent Appeals and Interferences (“Board”) consulted the senior party’s application, not the junior party’s patent. After denying the motions for lack of written description, the Board cancelled the junior party’s patent claims because the senior party’s application had priority. The junior party appealed, and the Federal Circuit reversed.

The Federal Circuit’s law clearly provides 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.” In contrast, when a party challenges copied claims in an interference proceeding as invalid based on prior art, the challenged claims are interpreted in light of the host disclosure. In this case, the application was challenged as unpatentable for lack of written description. Hence, the claims should have been interpreted in light of the originating disclosure.

A copy of the opinion can be found here.