Strelchenko v. Campbell,

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 26
Filed by: Richard E. Schafer
Administrative P atent Judge
Box Interference Filed
Washington, D.C. 20231 10 June 2002
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
NIKOLAI S. STRELCHENKO, JEFFREY M. BETTHAUSER,
GAIL L. JURGELLA, MARVIN M. PACE and MICHAEL D. BISHOP,
Junior Party,
(Application 09/357,445),
v.
KEITH HENRY STOCKMAN CAMPBELL and IAN WILMUT,
Senior Party
(Application 09/650,194).
_______________
Patent Interference 104,809 (McK)
_______________
ORDER
(Re times for filing oppositions and replies to Campbell Preliminary Motion 1)
Campbell has filed a preliminary motion under 37 CFR § 1.633(a) asserting that all of
Strelchenko’s involved claims are barred under 35 U.S.C. § 135(b). Since the motion appeared to
address a threshold issue, the filing of the motion was expedited. Paper 17, p. 3. However, under
the particular facts here involved, I have decided not to treat this issue as a threshold issue and
authorize an opposition and reply to be filed according to the schedule and conditions set for other
preliminary motions in the Appendix to Paper 17.

1 Campb ell’s application is also involved in Interference 104,746 with the Stice patent and Strelchenko’s
application is also involved in Interference 104,80 8 with the Stice p atent.
- 2 -
DISCUSSION
This interference is between Strelchenko Application 09/357,445 and Campbell Application
09/650,194. Campbell asserts that Strelchenko’s involved claims are unpatentable under 35 U.S.C.
§ 135(b)(1) because those claims were not made within one year of issuance of Patent 5,945,577 to
Stice. The Stice patent is not involved in this interference.1
With respect to the purpose of § 135(b) the Federal Circuit recently stated:
[S]ection 135(b) was enacted to codify a legal principle akin to laches,
imposing “a statute of limitations, so to speak, on interferences so that the patentee
might be more secure in his property right.”
In re Berger, 279 F.3d 975, 982, 61 USPQ2d 1523, 1527 (Fed. Cir. 2002) quoting Corbett v.
Chisholm, 568 F.2d 759, 765, 196 USPQ 337, 342 (CCPA 1977) (emphasis added). Thus, the
fundamental purpose of § 135(b) is to protect the patentee from being involved in an interference
where certain conditions are met. The Stice patent is not involved in this interference. Thus, the
fundamental purpose of § 135(b) of protecting the patentee from an interference is not implicated
by Campbell’s motion. An early decision on the motion is therefore not necessary to protect the
patentee from having to prosecute this interference.
In this regard, the facts here are unlike those in Berman v. Housey, Appeal No. 01-1311 (Fed.
Cir., May 29, 2002). Berman provoked and interference by substantially copying a claim from a
Housey patent. An interference was declared between three Housey patents and the Berman
application. Housey filed a preliminary motion asserting that Berman’s sole involved claim was
unpatentable under § 135(b) in view of the claims of two of the Housey patents in the interference.
The Board, in response to Housey’s request, agreed to take up the motion on an expedited basis
ahead of any other motions. The board granted Housey’s preliminary motion and terminated the
interference with a judgment against Berman without consideration of Berman’s motion asserting
unpatentability of Housey’s claims and without proceeding to the priority phase of the interference.
The board reasoned that “continuation of the interference under the circumstances of this case would

- 3 -
be contrary to the purpose of § 135(b) to act as a stature of repose.” On appeal of the board’s
decision the Federal Circuit affirmed stating:
[W]e hold that § 135(b) is a threshold issue that should be addressed by the
Board at the preliminary stage of an interference before proceeding to the
merits, and that the Board in this case properly refused to consider Berman’s
unpatentability motion once it determined that Berman’s claim 64 was barred
under § 135(b). . . . . Housey’s motion involved Berman’s right to contest that
he had priority of invention over the subject of the count, and thus, as
discussed above, implicated the Board’s authority to conduct the interference.
Berman’s motion , on the other hand, involved a “mere” patentability issue.
As discussed above, a determination that the claims involved in an
interference are not barred by § 135(b) is a condition precedent to the
declaration of an interference that should be resolved before issues of priority
and patentability are addressed, and thus when the board is presented with
both a preliminary motion involving a § 135(b) issue and a preliminary
motion involving a garden-variety patentability issue it first should address
the former. . . . Because the Board should terminate an interference once it
determines that there is a § 135(b) bar, the Board acts in accordance with
§ 135 when it refuses to address other issues of priority or patentability raised
in that interference.
Berman v. Housey, 01-1311, *10-*13 (Fed. Cir., May 29, 2002) (Fed. Cir. BBS).
Unlike the facts in Berman where the patentee Housey raised the § 135(b) issue to terminate
the interference involving Housey’s patents, the 135(b) question is raised by an applicant with
respect to a patent not involved in this interference. Granting this motion will not necessarily
prevent Stice from having to defend an interference. Granting Campbell’s motion will not result in
termination of this interference. Under the particular facts of this case, Campbell’s motion is more
akin to a “‘mere’ patentability issue,” than to an application of a statute of limitation or repose in
favor of Stice.
I recognize that Berman is binding precedent, however, the significant difference in facts
militates a different result. As the Federal Circuit has noted:
Undue liberties should not be taken with court decisions, which should be
construed in accordance with the precise issue before the court, and . . . a
fertile source of error in patent law is the misapplication of a sound legal
principle established in one case to another case in which the facts are
essentially different and the principle has no application whatsoever.

- 4 -
FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1417 n.12, 5 USPQ2d 1112 , 1117 n.12 (Fed. Cir.
1987) quoting In re Ruscetta, 255 F.2d 687, 689, 118 USPQ 101, 103 (CCPA 1958).
Under the paticular facts of this interference, I see no reason to continue to expedite
proceedings on Campbell’s motion.
An opposition and reply may be filed according to the schedule set in the Appendix to
Paper 17.
Richard E. Schafer
Administrative Patent Judge
Arlington, VA
cc (via Fax):
Attorney for Strelchenko
(real party in interest
Infigen, Inc.):
Richard J. Warburg, Esq.
Arthur A. Wellman, Jr. Esq.
FOLEY & LARDNER
Attorney for Campbell
(real party in interest: (1) Assignees:
Department for Environment, Food & Rural
Affairs of London, England and Roslin
Institute (Edinburgh) of Midlothian,
England; (2) licensees: Geron Corporation,
of Menlo Park, CA and PPL Therapeutics
Ltd of Midlothian, England):
Kenneth J. Meyers, Esq.
FINNEGAN, HENDERSON,
FARABOW, GARRETT &
DUNNER L.L.P.
David J. Earp, Esq.
GERON CORPORATION