10884379 (B.P.A.I. Feb. 3, 2012)

Reynolds et al.v.Natarajan et al.

Board of Patent Appeals and InterferencesFeb 3, 2012

10884379 (B.P.A.I. Feb. 3, 2012)

1 BoxInterferences@uspto.gov Paper 28 Telephone: 571-272-4683 Entered: 3 February 2012 UNITED STATES PATENT AND TRADEMARK OFFICE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Patent Interference 105,848 McK Technology Center 1600 ____________________ SATEESH K. NATARAJAN, OFIR MORENO, THOMAS J. GRADDIS, DAVID F. DUNCAN, REINER LAUS and FENG CHEN, Application 10/923,413, Junior Party, v. MARK REYNOLDS and PAUL POLAKIS, Patent 7,893,072 B2, Senior Party. ____________________ Before: FRED E. McKELVEY, RICHARD E. SCHAFER and JAMESON LEE, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. JUDGMENT 1 2 Papers filed by the parties 1 Genentech, Inc., the real party in interest for Reynolds, requests entry 2 of judgment against its involved patent Claims 3 and 12-13. The noted 3 claims have been designated as corresponding to Count 1. Paper 27. 4 Dendreon Corporation, the real party in interest for Natarajan, 5 requests entry of judgment as to Count 2. Paper 24. Involved Natarajan 6 application Claims 22, 26, 29-30, 41 and 55-60 have been designated as 7 corresponding to Count 2. 8 Dendreon Corporation has also filed an amendment in its involved 9 application cancelling Natarajan Claims 22, 26, 29-30, 41 and 55-60. 10 Paper 24, Exhibit A. The amendment is to be entered after entry of 11 judgment. 12 Genentech, Inc., on behalf of both Reynolds and Natarajan and 13 pursuant to 35 U.S.C. Â§ 135(c), has filed a copy of a settlement agreement. 14 Paper 25 and Paper 26. 15 Order 16 Upon consideration of the requests for entry of adverse judgment, it is 17 Count 1 18 ORDERDED that judgment on priority as to Count 1 (Paper 1, 19 pages 8-9) is awarded against Senior Party MARK REYNOLDS and PAUL 20 POLAKIS and real party in interest GENENTECH, INC. 21 3 FURTHER ORDERED that Senior Party MARK REYNOLDS 1 and PAUL POLAKIS and real party in interest GENENTECH, INC., are 2 not entitled to a patent containing Claims 3 and 12-13 (corresponding to 3 Count 1) of: 4 U.S. patent 7,893,072 B2 5 granted 22 February 2011 6 based on application 10/884,379 7 filed 2 July 2004. 8 FURTHER ORDERED that claims 3 and 12-13 of U.S. patent 9 7,893,072 B2 are cancelled. 35 U.S.C. Â§ 135(a). 10 Count 2 11 ORDERDED that judgment on priority as to Count 2 (Paper 1, 12 pages 9-10) is awarded against Junior Party SATEESH K. NATARAJAN, 13 OFIR MORENO, THOMAS J. GRADDIS, DAVID F. DUNCAN, REINER 14 LAUS and FENG CHEN and real party in interest DENDREON 15 CORPORATION. 16 FURTHER ORDERED that Junior Party SATEESH K. 17 NATARAJAN, OFIR MORENO, THOMAS J. GRADDIS, DAVID F. 18 DUNCAN, REINER LAUS and FENG CHEN and real party in interest 19 DENDREON CORPORATION, are not entitled to a patent containing 20 Claims 22, 26, 29-30, 41 and 55-60 (corresponding to Count 2) of: 21 application 10/923,413 22 filed 20 August 2004 23 FURTHER ORDERED that claims 22, 26, 29-30, 41 and 55-60 24 of application 10/923,413 are finally refused. 35 U.S.C. Â§ 135(a). 25 4 Amendment 1 FURTHER ORDERED that upon entry of this JUDGMENT, 2 the Clerk shall forward the Amendment (Exhibit A of Paper 24) filed by 3 Dendreon Corporation and Natarajan to the appropriate USPTO organization 4 for entry in application 10/923,413. 5 Settlement agreement 6 FURTHER ORDERED that the Clerk shall process the Â§ 135(c) 7 settlement agreement as requested by the parties. 8 Entry of copies of Judgment 9 FURTHER ORDERED that a copy of this JUDGMENT shall 10 be placed in the files of (1) Natarajan application 10/923,413 and 11 (2) Reynolds patent 7,893,072 B2. 12 Distribution of files 13 FURTHER ORDERED that the Clerk is directed to distribute 14 the files upon entry of this JUDGMENT. 15 5 Attorney for Junior Party Natarajan (real party in interest: Dendreon Corporation): Michael T. Rosato KILPATRICK TOWNSEND & STOCKTON LLP Two Embarcadero Center, 8th Floor San Francisco, CA 94111-3834 Tel: 206-467-9600 Fax: 415-576-0300 Email: mrosato@kilpatricktownsend.com Mark H. Hopkins Joseph R. Snyder KILPATRICK TOWNSEND & STOCKTON LLP 2175 North California Blvd., Suit 600 Walnut Creek, CA 94596 Tel: 925-472-5000 Fax: 925-472-8895 Email: mhopkins@kilpatricktownsend.com Email: jsnyder@kilpatricktownsend.com Attorney for Senior Party Reynolds (real party in interest: Genentech, Inc.): Katherine M. Kowalchyk MERCHANT & GOULD 3200 IDS Center 80 South 8th Street Minneapolis, MN 55402-2215 Tel: 612-332-5300 (Minneapolis) Fax: 612-332-9801 (Minneapolis) Email: kkowalchyk@merchantgould.com 6 Bruce J. Boggs MERECHANT 7 GOULD P.C. 1701 Duke Street Suite 310 Alexandria, VA 22314 Tel: 703-684-2515 (Boggs) Fax: 703-684-2501 (Boggs) Email: jboggs@merchantgould.com

Reynolds et al. V. Natarajan et al.