Is The Respondent's Entire Specification Prior Art on a Motion for a Judgment of No-Interference-In-Fact?¹

Introduction

According to 37 CFR 41.203(a), "An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa." As discussed hereinafter, the phrase "the subject matter of a claim" has traditionally been interpreted as meaning the subject matter defined by that claim. In other words, the test for whether two claims owned by different parties interfere has traditionally been the same as the test for whether two claims owned by the same party but appearing in different cases¹ stand in an obviousness-type double patenting relationship. As is also discussed hereinafter, when the issue is obviousness-type double patenting, it is very well established that only the subject matter defined by the claims is to be compared and that the entire specification of the reference patent or application is not part of the "prior art." However, the Federal Circuit's opinion in Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325, 95 USPQ2d 1097 (Fed. Cir. 2010) (opinion by Circuit Judge Rader for a panel that also consisted of Chief Circuit Judge Michel and Senior Circuit Judge Schall) (hereinafter referred to as "Rolls-Royce"), is at least verbally inconsistent with that traditional under...