Chevron USA versus University of Wyoming Research Corp

Chevron USA versus University of Wyoming Research Corp

The 2011 passage of the Leahy-Smith America Invents Act made interventions pointless but they remain in arguments between patents and applications claiming priority to claims filed before the change to a "first-inventor-to-file" system. Recently, the priority determination of the Patent Trial and Appeal Board in Chevron USA Inc. versus University of Wyoming Research Corp was upheld by the Federal Circuit in ruling based on the Board's construction of an undisputedly dispositive term.

U.S. Interference No. 106,064 was declared between the University of Wyoming Research Corp. (over involved U.S. Patent No. 8,367,425 and Chevron U.S.A.'s Application No. 12/883,814). Claim 1 of the '814 application alternatively defined the Count in the interference. A method to determine the asphaltene stability in a hydrocarbon-containing material having solvated asphaltenes comprising several steps or Claim 5 of the '425 patent. A method to determine the asphaltene stability in a hydrocarbon-containing material having solvated asphaltenes comprising several steps therein comprising different steps. This claim was copied by Wyoming to cause the intervention.

Wyoming was chosen as the Junior Party in the intervention as declared, their earliest priority date being recognized by the Board as September 23, 2011 (the filing date of U.S. Application No. 13/243,782, now U.S. Patent No. 8,273,581). Chevron was chosen as the Senior Party, having the benefit priority to U.S. Provisional Application Nos. 61/242,280, filed 14 September 2009 and 61/312,765, filed 11 March 2010. Wyoming was granted benefit of priority to U.S. Provisional Application 60/711,599 (filed Aug. 25, 2005), and U.S. Application No. 11/510,491 (filed Aug. 25, 2006) by the Board in its Decision on Motions. Wyoming was declared the Senior Party.

A priority statement was filed by Chevron ascertaining March 1, 2009 as its earliest conception date (supported by evidence of diligence from conception to its earliest filing date). The Board accordingly held that Chevron was unable to establish its date of invention to be earlier than the earliest priority date (the '599 application filing date) of Wyoming and entered judgment in favor of Wyoming. This appeal followed. The Federal Circuit confirmed that in an opinion by Judge Schall joined by Judge Lourie; Judge Newman filed a dissenting opinion. That the Board had made a mistake in ascertaining that Wyoming was entitled to its earliest filing date based on a flawed claim construction was the basis of Chevron's appeal. Chevron argued that the Board had misinterpreted the limitation, "gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent" to mean "the alkane mobile phase solvent is incrementally removed from the column over a period of time by continuously adding a final mobile phase solvent" (for the meaning of "gradually") and "without interruption" for the term "continuously." Chevron insisted that this limitation should be interpreted to mean, "the amount of alkane mobile phase solvent fed into the column is incrementally decreased from 100% to 0% over a period of time without interruption while the amount of final mobile phase solvent fed into the column is incrementally increased from 0% to 100% over the same period of time," as it had argued before the Board. (Neither party disputed the construction given by the Board to the term "continuously")

That the appeal concerned that "one, narrow issue" of claim construction, because there was no argument that "Wyoming's '425 patent and the priority applications have written description support for the limitation under the Board's construction, but that they lack such support under the construction urged by Chevron," the panel recognized. If the Board correctly interpreted this term, Chevron was not eligible for priority for the Count. Like the Board, the Federal Circuit majority based its decision confirming the Board on express disclosure in the '814 specification regarding the term "gradually". "The term gradually as used herein shall be understood to mean that the alkane mobile phase solvent is incrementally removed from the column over a period of time by continuously adding a final mobile phase solvent having a solubility parameter at least 1 MPa0.5 higher than the alkane mobile phase solvent to the column." The Board had correctly interpreted the dispositive limitation under the broadest reasonable construction standard, particularly in view of the express definition of the term "gradually" in the '814 application specification, the panel majority agreed. Chevron's legal argument that the Board's ruling was contrary to the Federal Circuit's precedent from In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) was rejected by the majority.