09470618 (B.P.A.I. Jan. 9, 2004)

Cohen et al.v.Couto et al. V. Couto et al.

Board of Patent Appeals and InterferencesJan 9, 2004

09470618 (B.P.A.I. Jan. 9, 2004)

The opinion in support of the decision being entered today is not binding precedent of the Board. Paper42 By: Trial Section Merits Panel Board of Patent Appeals and Interferences U.S. Patent and Trademark Office Filed: January 9, 2004 P.O. Box 1450 Alexandria, VA 22313-1450 Tel: 703-308-9797 Fax: 703-305-0942 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS ANDINTERFERENCES (Administrative Patent Judge Carol A. Spiegel) WILED LINDA B. COUTO, PETER C. COLOSI and XIAOBING QUIAN 4 JAN 9 2004 Junior party, PAT & T M OCFICF _ALs U.S. Patent 6,200,560 E BOARDof PATFNÃ½ Ã½JPA S U.S. Patent 6,221,349 ANC INTENENE,,,L:LlÃ½ V. LAWRENCE K. COHEN, S. KAYE SPRATT and LINDA B. COUTO Senior party, Application 09/084,423 Patent Interference No. 105,094 Before: SCHAFER, TORCZON and SPIEGEL, Administrative Patent Judge SPIEGEL, Administrative Patent Judge. JUDGMENT PURSUANT TO 37 CFR Â§ 1.662(a) Interference No. 105,094 Paper42 Couto v. Cohen Page 2 1. Findings of fact 1. This interference is between (a) U.S. Patents 6,200,560 and 6,221,349 to Couto et al., which are assigned to AVIGEN, INC. and (b) Application 09/084,423 of Cohen et al., which is assigned to CELL GENESYS, INC. (Paper 1). 2. A settlement agreement between the parties was submitted on October 28, 2003 (Paper 36). 3. Party Cohen submitted a copy of the Assignment of its entire right, title and interest in and to its involved application to the assignee of the involved Couto patent, AVIGEN, INC. According to party Cohen, the original Assignment was being simultaneously submitted to the US PTO Assignment Branch, for recordation. [Paper 39.] 4. "Pursuant to 37 C.F.R. Â§ 1.662(a), Senior Party Cohen hereby requests adverse judgment in this interference. Attached to this paper as Tab A is an amendment deleting the claims in interference in favor of new claims 41-52, which do not interfere with the claims of the Couto patents in interference." [Paper 41.] 5. According to the records of the US PTO, its Assignment Branch has not yet recorded the assignment of the Cohen application to AVIGEN, INC, 11. Discussion Based upon the copy of the submitted Assignment, we enter adverse judgment against senior party Cohen as to the subject matter of Count 1, the sole count of the interference. Party Cohen has not submitted any motion to amend the claims of its involved application. We do NOT enter the amendment attached as Tab A in Paper 41 and take NO position on whether the recited new claims 41-52 interfere with the involved Couto patent claims. Party Cohen should resubmit the proposed amendment to the Examiner once its application is returned to the examiners jurisdiction. We leave entry of the proposed amendment to the discretion of the Examiner. 111. Order Therefore, it is ORDERED that judgment on priority as to Count 1, the sole count in the Interference No. 106,094 Paper42 Couto v. Cohen Page 3 interference, is awarded against senior party LAWRENCE K. COHEN, S. KAYE SPRATT and LINDA B. COUTO; FURTHER ORDERED that senior party LAWRENCE K. COHEN, S. KAYE SPRATT and LINDA B. COUTO is not entitled to a patent containing claims 32-40 (corresponding to Count 1); FURTHER ORDERED that a copy of this decision (Paper 42) be given a paper number and entered in the administrative record of Couto U.S. Patents 6,200,560 and 6,221,349 and of Cohen Application 09/084,423; and FURTHER ORDERED that if there is a settlement agreement which has not been filed, attention is directed to 35 U.S.C. Â§ 135(c) and 37 CFR Â§ 1.661. RICHARD E. SCHAFER Administrative Patent Judg RICHARDTORCÃ½ZON BOARD OF PATENT Administrative Patent Judge' APPEALS AND INTERFERENCES CAROL A. SPtEGE1 Administrative Patent Judge Interference No. 105,094 Paper42 Couto v. Cohen Page 4 cc (via fax and first class mail): Attorney for Couto (real party in interest AVIGEN, INC.) R. Danny Huntington, Esq. Malcolm K. McGowan, Esq. BURNS, DOANE, SWECKER & MATHIS, L.L.P. P.O. Box 14014 1737 King Street, Suite 500 Alexandria, VA 22314-2756 Tel: 703-836-6620 Fax: 703-836-2021 E-mail: dannyh(a-)burnsdoane.com malcolmm(a)burnsdoane.com Attorney for Cohen: Mara K. Featherstone, Esq. STOEL RIVES, LLP One Utah Center 201 South Main Street, Suite 1100 Salt Lake City, Utah 84111 Tel: 801-578-6992 Fax: 801-578-6999 Malcolm K. McGowan, Esq.] BURNS, DOANE, SWECKER & MATHIS P.O. Box 1404 1737 King Street, Suite 500 Alexandria, VA 22314-2727 Tel: 703-836-6620 Fax: 703-836-2021

Cohen et al. V. Couto et al. V. Couto et al.