The Board had previously granted Amgen's Preliminary Motion in February, 2003, holding that all of the opponent's designated claims were unpatentable for lack of enablement due to their overly broad scope, and had entered Judgment against the opposing party, whose was the Junior party in the Interference.
Many months later, the Junior party requested a testimony period, stating that in its Preliminary Statement, it had alleged a date of invention prior to Amgen's effective filing date (Amgen's invention date), and were thus entitled to a testimony period to prove its alleged invention date, and thereby deny Amgen (the Senior party) a patent. Amgen opposed the request for a testimony period, arguing, inter alia, that because the Judgment was in style and content a Final decision, the only recourse the Junior Party had was an appeal.
Subsequently, the Board issued an Order authorizing the Junior party to take testimony on priority of invention. Amgen requested reconsideration of the Order, inter alia, arguing that the Junior party's Preliminary Statement did not fairly raise the issue of priority. In response to Amgen's request, the Board decided to rescind its Order granting the Junior party a testimony period, and entered FINAL judgment against the Junior party.
The Board confirmed that:
"it has the authority, but is not compelled, to consider issues of priority or patentability after a dispositive decision has been made or a dispositive action taken. When confronted with a situation at the close of decisions on preliminary motions in which one party has no patentable claims that correspond to the count, at least the following three factors appear to provide guidance on answering the question of whether or not to continue [the interference]. No one factor is necessarily dispositive in any given case.
Which party has been accorded for priority the benefit of the earliest application [i.e. which party is the Senior party]?
What efforts has the party without patentable claims made to preserve patentable claims corresponding to the count?
How strong is the evidence that that party has presented supporting its case of prior invention of an embodiment within the scope of the count?"
In answering these three questions, the Board noted the following:
1. Amgen is the Senior party in the Interference,
2. the Junior party never tried to add claims supported by its specification that interfered with the Amgen's claims (e.g., the Junior party did not file a 633(i) motion to add or amend its claims in response to Amgen's Preliminary Motion alleging unpatentability of the Junior party's claims), and
3. the Junior party's Preliminary Statement was insufficient, because the Preliminary Statement contained unwitnessed and unsigned notebook pages, which on their face do not identify the experiment, the materials, or the results such that, without more, one could have any basis to say that the Junior party had made an embodiment within the scope of the count. The Board noted that the scant and debatable evidence submitted by the Junior party with its Preliminary Statement weighs against a holding that priority has been fully and fairly raised by the Junior party, which might have resulted in a testimony period being granted to the Junior party.