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ARTICLE · 14 JUNE 2010

Court Affirms Board's Interference Ruling After Finding Claims Satisfied Written Description Requirement

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In Yorkey v. Diab, No. 08-1578 (Fed. Cir. Apr. 7, 2010), the Federal Circuit affirmed the Board’s decision denying Thomas J. Yorkey’s motion for judgment that claim 39 of U.S. Patent Application Serial No. 09/111,604 ("the ’604 application") failed to comply with the written description requirement of 35 U.S.C. § 112, ¶ 1, and judgment of no interference-in-fact with respect to U.S. Patent No. 5,645,060 ("the ’060 patent").

United StatesIntellectual Property
Troy Petersen
Troy Petersen
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Judges: Michel (author), Gajarsa, Kendall (District Judge sitting by designation)
[Appealed from Board]

In Yorkey v. Diab, No. 08-1578 (Fed. Cir. Apr. 7, 2010), the Federal Circuit affirmed the Board's decision denying Thomas J. Yorkey's motion for judgment that claim 39 of U.S. Patent Application Serial No. 09/111,604 ("the '604 application") failed to comply with the written description requirement of 35 U.S.C. § 112, ¶ 1, and judgment of no interference-in-fact with respect to U.S. Patent No. 5,645,060 ("the '060 patent").

Yorkey owns the '060 patent, which is directed to measuring the concentration of oxygen in blood and addresses the problem of accurate measurement in the presence of ambient noise interference. Mohamed K. Diab and five other inventors filed the '604 application, claiming priority to two earlier applications. The Board declared an interference, identifying Yorkey as the junior party.

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