Intellectual Property News and Reports

The University of Wyoming Research Corporation, d/b/a Western Research Institute (“Wyoming”), is the owner of U.S. Patent No. 8,367,425 (“the ’425 patent”). The ’425 patent is directed to a procedure whereby (1) solvents of increasing strength are successively passed over asphaltenes that have been segregated in a packed column from a hydrocarbon such as oil; and (2) amounts of asphaltenes dissolved and eluted from the column by the various solvents yield information about the oil. See ’425 patent Abstract & col. 12 ll. 53–65. The Board defined the single count of the interference as claim 1 of Chevron U.S.A. Inc.’s (“Chevron”) U.S. Patent Application No. 12/833,814 (“the ’814 application”) or claim 5 of the ’425 patent, which Wyoming had copied from Chevron in order to provoke an interference (“the Count”). Claim 1 of the ’814 application reads as follows:

1. A method for determining asphaltene stability in a hydrocarbon-containing material having solvated asphaltenes therein, the method comprising the steps of: (a) precipitating an amount of the asphaltenes from a liquid sample of the hydrocarbon-containing material with an alkane mobile phase solvent in a column; (b) dissolving a first amount and a second amount of the precipitated asphaltenes by gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent having a solubility parameter at least 1 MPa0.5 higher than the alkane mobile phase solvent; (c) monitoring the concentration of eluted fractions from the column; (d) creating a solubility profile of the dissolved asphaltenes in the hydrocarbon-containing material; and (e) determining one or more asphaltene stability parameters of the hydrocarbon-containing material. Decision on Motions at 3, J.A. 8 (emphasis in original, additional emphases removed).

Relevant to this appeal, the Board construed the terms “gradually” and “continuously” in the limitation “gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent” as follows: The Board construed “gradually” 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.” Id. at 10, J.A. 15. The Board construed “continuously” to mean “without interruption.” Id. at 8, J.A. 13. Based upon these constructions, the Board held that Wyoming’s ’425 patent had adequate written description for this Count limitation. Id. at 12–14, 17, J.A. 17–19, 22. The Board further held that Wyoming was entitled to the benefit of the earlier filing dates of two patent applications, U.S. Provisional Application 60/711,599 (Aug. 25, 2005), and follow-up U.S. Nonprovisional Application 11/510,491 (Aug. 25, 2006) (collectively, “the priority applications”). Id. at 35, J.A. 40. Because Chevron had filed a Priority Statement that indicated its earliest corroborated conception coupled with diligence date was March 1, 2009, the Board determined that Chevron was unable to prevail on priority. Id.; Judgment at 2, J.A. 47. Accordingly, the Board assigned Wyoming status as senior party and entered judgment in its favor in the interference. Judgment at 2–3, J.A. 47–48.

Download Chevron U.S.A. Inc. v. University of Wyoming Research Corp.