Inventorship Disputes (Interferences and Derivations)

Holdings:

• “[I]n effect, that claims are not for substantially the same subject matter if one of them contains one or more material limitations which are not found in the other. This articulation is the same as the two-way test, which requires comparing the two sets of claims to determine if either set contains material limitations not found in the other, rather than just looking to only see if the post-critical date claims contain material limitations not present in the pre-critical date claims.”
• “That each of these applications were amended to have these different limitations in order to overcome rejections is evidence that these limitations are material to their respective applications and that their differences cannot be disregarded. These actions are strong evidence of the materiality of the amendment to add the 'free of a containment material atop the drug layer' limitation to the '591 application. There is also no evidence in the record . . . to support a finding that this limitation is not material. On this record, we conclude that as a matter of law the pre-critical date claims are materially different from the post-critical date claims [and] [t]he '591 application is time-barred under section 135(b)(1).