Druker et al.v.Sawyers et al.

Patent Trial and Appeal Board

Feb 18, 2014

12178926 (P.T.A.B. Feb. 18, 2014)

Mail Stop Interference Paper 3
Tel: 571-272-4683 Entered: 18 February 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

OREGON HEALTH AND SCIENCE UNIVERSITY
Junior Party
Patent 7,326,534 B2 (Interference 105,992)
Patent 7,416,873 B2 (Interference 105,993)
Patent 7,592,142 B2 (Interference 105,994)

v.

THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
Senior Party
Application 13/547,954
____________________

Patent Interference 105,992 McK
Patent Interference 105,993 McK
Patent Interference 105,994 McK
Technology Center 1600
____________________

Before: FRED E. McKELVEY, RICHARD E. SCHAFER and
SALLY GARDNER LANE, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

JUDGMENT

2

I. Background 1
A. Declaration and notices 2
These interferences were declared on 28 January 2014. 3
Notices of lead and backup counsel were due on or before 11 February 2014. 4
California timely filed a notice of lead and backup counsel. 5
Oregon has filed no papers in these interferences. 6
B. PTAB email of 11 February 2014 7
On 11 February 2014 (11:13 am), the PTAB sent an email to counsel of 8
record for Oregon. The email reads: 9
From: Banks, Lawrence J. On Behalf Of Interference Trial Section 10
Sent: Tuesday, February 11, 2014 11:13 AM 11
To: 'tanya.harding@klarquist.com'; 'USPatentMail@ropesgray.com'; 12
james.haley@ropesgray.com 13
Subject: Interference Papers due today by COB 14

Counsel, 15

The following interferences were declared on January 28, 2014: 16
Interference 105992: Involving Patent 7,326,534 and 17
Application 13/547,954 18
Interference 105993: Involving Patent 7,416,873 and 19
Application 13/547,954 20
Interference 105994: Involving Patent 7,592,142 and 21
Application 13/547,954 22
Initial papers have not been received and are due by close of business 23
today. 24
The initial papers are: 25
3

Notice of Lead and Backup Counsel 1
Real Party in Interest 2
Notice of Related Proceedings 3
Clean Copy of Claims 4
Request for File Copies 5
Please file the Notice of Lead and Backup Counsel via email at 6
BoxInterferences@uspto.gov. Please wait until you receive a 7
username and password which will allow you to file the remaining 8
papers via the web portal. 9
Please notify me immediately if you do not intend to file a Request for 10
File Copies so opposing counsel may receive their file copies as soon 11
as possible. 12
If you did not receive a copy of the declaration of interference, or 13
have any question, contact the Board at 571-272-4683. 14
Thanks, 15
Lawrence J. Banks 16
Paralegal Specialist 17
Patent Trial and Appeal Board 18
USPTO 19

C. Haley to Scott email 20
The record contains a copy of portions of an email by James F. Haley (lead 21
counsel for California) to Gregory K. Scott. Insofar as relevant to issue on these 22
interferences, the email reads: 23
From: Haley, James F. [mailto:James.Haley@ropesgray.com] 24
Sent: Wednesday, February 12, 2014 2:03 PM 25
To: Gregory K. Scott, Ph.D. 26
Cc: Menzies, Sheila; Li, Qianru 27
Subject: Oregon v California Interferences 105992-994 28

4

Gregory: 1

We have not received any of the Oregon papers that were due 2
yesterday in the above interferences. Please confirm that you have not 3
filed them and do not intend to do so. 4

Assuming Oregon has, and will[ ]not contest the interferences, we 5
intend to ask the Board to enter judgment of priority in Senior Party 6
California’s favor. 7

Jim, Qianru and Shelia 8
9
James F. Haley, Jr., Ph.D., J.D. 10
ROPES & GRAY LLP 11
T +1 212 596 9034 | F +1 646 728 6231 12
1211 Avenue of the Americas 13
New York, NY 10036-8704 14
James.Haley@ropesgray.com 15
www.ropesgray.com 16

D. PTAB email of 13 February 2014 17
On 13 February 2014, the PTAB sent another email to counsel of record. 18
The email reads: 19
From: Banks, Lawrence J. [mailto:Lawrence.Banks@USPTO.GOV] 20
On Behalf Of Interference Trial Section 21
Sent: Thursday, February 13, 2014 8:21 AM 22
To: tanya.harding@klarquist.com 23
Cc: Haley, James F. 24
Subject: FW: Interference Papers Due 25

5

Ms. Harding, 1

Your initial papers are past due. If you are not participating in the 2
below mentioned interference or no longer representing the involved 3
patents, please contact the board as soon as possible. 4
Your quick response to this matter is appreciated. 5

Thanks, 6

Lawrence J. Banks 7
Paralegal Specialist 8
Patent Trial and Appeal Board 9
USPTO 10

E. Scott to Haley email 11
The record also contains a copy of an email by Gregory K. Scott to “Jim” 12
(James F. Haley). The date of the email is not known. Insofar as relevant to issue 13
on these interferences, the email reads: 14
Dear Jim: 15

I confirm that we have not filed any of the Oregon papers that were 16
due yesterday in the referenced interferences, and do not intend to do 17
so. 18

Best regards, 19
Greg 20

Gregory K. Scott, PhD, JD 21
Patent Attorney 22
Klarquist Sparkman, LLP 23
One World Trade Center, Suite 1600 24
Portland, OR 97204-2988 U.S.A. 25
503-595-5300 (office) 26
503-473-0840 (direct) 27
gregory.scott@klarquist.com 28
www.klarquist.com 29
6

F. Haley to PTAB email 1
The record contains an email by James F. Haley to the PTAB which reads in 2
relevant parts as follows: 3
From: Haley, James F. [mailto:James.Haley@ropesgray.com] 4
Sent: Thursday, February 13, 2014 9:23 AM 5
To: Interference Trial Section; gregory.scott@klarquist.com 6
Cc: Li, Qianru; Menzies, Sheila 7
Subject: RE: Interference Papers Due Interferences 105992, 993 and 8
994 9

Mr. Banks: 10

Yesterday we contacted Greg Scott of the Klarquist firm. Greg had 11
indicated to us on Tuesday that he was responsible for this matter. 12

He has indicated that OHSU did not file and papers and did not intend 13
to do so. I have copied his email and mine below. 14

Jim 15

II. Discussion 16
Based on the series of emails set out above, we find that Junior Party Oregon 17
has elected not to participate in these interferences. 18
Oregon’s non-participation in these interferences is consistent with its 19
requests for adverse judgments in Interference 105,943, Interference 105,944, and 20
Interference 105,945 involving different claims of the same three Oregon patents. 21
Since Oregon has elected not to participate in these interferences and is the 22
junior party, it is appropriate to enter judgment against Oregon. 23
7

There are three counts. Count 1 appears in Interference 105,992. Count 2 1
appears in Interference 105,993. Count 3 appears in Interference 105,994 2
III. Decision 3
Upon consideration of facts as set out above and for the reasons given, the 4
following is ordered. 5
Interference 105,992 6
ORDERDED that judgment on priority as to Count 1 (the sole count 7
in Interference 105,992; Paper 1, page 5) is awarded against Junior Party Oregon 8
Health and Science University, Brian J. Druker, and Amie Corbin. 9
FURTHER ORDERED that Junior Party Oregon Health and Science 10
University, Brian J. Druker, and Amie Corbin is not entitled to a patent containing 11
claims 3, 6, 13-141 (corresponding to Count 1 of Interference 105,992) of: 12
U.S. Patent 7,326,534 B2 13
issued 5 February 2008 14
FURTHER ORDERED that claims 3, 6, and 13-14 of U.S. 15
Patent 7,326,534 are cancelled. 35 U.S.C. § 135(a). 16
Interference 105,993 17
FURTHER ORDERDED that judgment on priority as to Count 2 (the 18
sole count in Interference 105,993; Paper 1, page 7) is awarded against Junior 19
Party Oregon Health and Science University, Brian J. Druker, and Amie Corbin. 20

1 As issued, U.S. Patent 7,326,534 B2 contained Claims 1-14. Claims 1-2, 4-5,
and 7-12 have been cancelled as a result of a judgment entered in Interference
105,943. All claims of the patent have now been cancelled.

8

FURTHER ORDERED that Junior Party Oregon Health and Science 1
University, Brian J. Druker, and Amie Corbin is not entitled to a patent containing 2
claims 4-5 and 11-122 (corresponding to Count 2 of Interference 105,993) of: 3
U.S. Patent 7,416,873 B2 4
issued 26 August 2008 5
FURTHER ORDERED that claims 4-5 and 11-12 of U.S. 6
Patent 7,416,873 B2 are cancelled. 35 U.S.C. § 135(a). 7
Interference 105,994 8
FURTHER ORDERDED that judgment on priority as to Count 3 (the 9
sole count in Interference 105,994; Paper 1, page 8) is awarded against Junior 10
Party Oregon Health and Science University, Brian J. Druker, and Amie Corbin. 11
FURTHER ORDERED that Junior Party Oregon Health and Science 12
University, Brian J. Druker, and Amie Corbin is not entitled to a patent containing 13
claims 4-5, 14-15 and 203 (corresponding to Count 3 of Interference 105,994) of: 14
U.S. Patent 7,592,142 B2 15
issued 22 September 2009 16
FURTHER ORDERED that claims 4-5, 14-15, and 20 of U.S. 17
Patent 7,592,142 B2 are cancelled. 35 U.S.C. § 135(a). 18

2 As issued, U.S. Patent 7,326,534 B2 contained Claims 1-14. Claims 1-2, 4-5,
and 7-12 have been cancelled as a result of a judgment entered in
Interference 105,943. All claims of the patent have now been cancelled.

3 As issued, U.S. Patent 7,592,142 B2 contained Claims 1-25. Claims 1-3, 6-13,
16-19 and 21-25 have been cancelled as a result of a judgment entered in
Interference 105,945. All claims of the patent have now been cancelled.

9

FURTHER ORDERED that if there is a settlement agreement, 1
attention is directed to 35 U.S.C. § 135(c). 2
FURTHER ORDERED that a copy of this JUDGMENT shall be 3
placed in the files of (1) Interference 105,993, (2) Interference 105,994, 4
(3) U.S. Patent 7,325,534 B2, (4) U.S. Patent 7,416,873 B2, (5) U.S. 5
Patent 7,592,142 B2, and (6) application 13/547,954. 6
FURTHER ORDERED that the Clerk is authorized to distribute the 7
files upon entry of this JUDGMENT. 8

10

cc (via electronic mail):

Counsel for Oregon Health and Science University:

James F. Haley, Jr.
Qianru Li
Ropes & Gray, LLP
Email: james.haley@ropesgray.com
Email: qianru.li@ropesgray.com

Counsel for The Regents of the University of California:

Gregory K. Scott, Ph.D.
Klarquist Sparkman, LLP
Email: Gregory.scott@klarquist.com