Look Both Ways: A Two-Way Test to Determine Whether Pre- And Post-bar Date Claims Are Materially Different Applies in Interference Proceedings

| Julie KimBrandon G. Smith

Speck v. Bates

Before Dyk, Bryson, and Stoll.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.

Summary: Comparing pre-Section 135 bar date claims to amended post-bar date claims in an interference proceeding requires comparing the two sets of claims to determine if either set contains material limitations not found in the other—a “two-way test.”

Ulrich Speck and others (collectively “Speck”) owned U.S. Patent No. 8,257,305 (“the ’305 patent”), which issued on September 4, 2012. Six days before the 35 U.S.C. § 135(b)(1) bar date, Brian L. Bates and others (collectively “Bates”) filed the U.S. Patent Application No. 14/013,591 (“the ’591 application”). On August 30, 2013, but still before the bar date, Bates filed a preliminary amendment that canceled all original claims and replaced them with new ones. Bates represented that these claims “include claims for the same or substantially the same subject matter as claims of” the ’305 patent. Bates later amended the claims again in response to an office action. After that amendment, the Board declared an interference, identifying Bates as the senior party and Speck as the junior party. Speck filed a motion and argued that the then-pending claims of Bates’ ’591 application were time-barred under 35 U.S.C. § 135(b)(1) because Bates amended the claims more than one year after the ’305 patent was published. The Board denied the motion because it found that Bates’ later amended claims did not differ materially from the pre-bar date claims. Speck appealed.

The Federal Circuit reversed and vacated the Board’s decision. The Federal Circuit determined that the Board applied the wrong legal standard because the Board analyzed only whether Bates’ post-bar date claims were narrower than its pre-bar claims (referred to as a “one-way test”). The Federal Circuit held that the proper test is “comparing the two sets of claims to determine if either set contains material limitations not found in the other”—a “two-way test.” The Federal Circuit explained that “[a]pplying a one-way test would permit materially broader post-[bar] date claims to avoid section 135(b)(1), despite having a materially broader scope.” Applying the two-way test, the Federal Circuit ruled that Bate’s pre- and post-critical date claims were materially different. The Federal Circuit explained that although a “difference in scope alone does not necessarily mean claims are materially different,” the prosecution histories demonstrated the differences were material because Bates amended the claims to overcome a rejection for obviousness.

Editor: Sean Murray