Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.

To determine whether an interference is required between two patents under 35 U.S.C. § 291 the court should apply a “two-way test” requiring that each patent, if prior art, would anticipate or render obvious the other patent.

For full opinion:
2011 U.S.App.LEXIS 17513
2011 WL 3672474

Opinion (Lourie): Genetics Institute, LLC (“Genetics”) appealed the District Court decision dismissing its action under 35 U.S.C. § 291 for lack of interference in fact between U.S. Patent 4,868,112 (“’112 patent”) and claims of U.S. Patents 6,228,620 (“’620 patent”) and 6,060,447 (“’447 patent”). The Court of Appeals for the Federal Circuit AFFIRMED the District Court’s decision holding that an interference in fact did not exist between the involved patents. For two patents to require an interference the patents must claim “the same or substantially the same subject matter.” In determining whether an interference existed between the patents, the Court of Appeals applied a “two-way test” that considers the anticipation and obviousness of the patents under 35 U.S.C. §§ 102 and 103. The “two-way test” requires that the each claim in question, if prior art, would have anticipated or rendered obvious the subject matter of the other claim. The District Court recognized the significance of the opinion in the Supreme Court case KSR International Co. v. Teleflex Inc., and searched for “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” The court found that a person of ordinary skill in the field would not have reason to make the changes to the ‘112 patent to obtain the ‘620 patent and the ‘447 patent, and therefore ‘112 did not render obvious ‘620 and ‘447 patents failing the “two-way test.”