Storer et al.v.Clark

Patent Trial and Appeal Board

Mar 23, 2015

10608907 (P.T.A.B. Mar. 23, 2015)

Boxinterferences@uspto.gov
571-272-4683 Filed: March 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

RICHARD STORER, GILLES GOSSELIN, JEAN-PIERRE SOMADOSSI,
and PAOLA LACOLLA
Junior Party
(US 7,608,600 B2)

v.

JEREMY CLARK
Senior Party
(Application No. 11/854,218)
________________
Interference No. 105,981 (JGN)
Technology Center 1600
________________

JUDGMENT - REQUEST FOR ADVERSE
Bd.R. 127(b)(4)

Before RICHARD SCHAFER, DEBORAH KATZ, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge

2

I. 1
On January 16, 2015, a merits panel of the Board entered a decision 2
on then-Senior Party Richard Storer, Gilles Gosselin, Jean-Pierre 3
Sommadossi, and Paola LaColla’s (“Storer”) and then-Junior Party Jeremy 4
Clark’s (“Clark”) substantive motions.
1
Paper No. 687. The panel 5
concluded, inter alia, that Storer’s US Appl. No. 60/392,350 (the 6
“’350 application”), for which Storer had been accorded priority benefit, 7
failed to enable any of the 2ˊ-fluoro-2ˊ-C-methyl nucleosides that are 8
required by the count. Id. at 35–36. The panel consequently granted Clark’s 9
motion 1 to deprive Storer of the benefit accorded with respect to Count 1 of 10
the ’350 application. Id. 11
As a result, the interference was redeclared with Storer as the Junior 12
Party, Clark as the Senior Party, and with Clark’s involved claims 164 and 13
165 and Storer’s involved claims 1-12, 17, 18, 20, 33, 34, 36, 38, 49-57, 62, 14
64, and 76-85 corresponding to the new Count 2. Paper No. 688. A 15
scheduling order for the priority phase was also entered on January 16, 2015. 16
Paper No. 689. Storer’s priority motion was due on February 27, 2015. 17
Paper 689, Appendix. Rather than filing its priority motion, Storer contacted 18
the Board via email to indicate that it did not intend to file a priority motion. 19
See Paper No. 692. 20

1
On January 16, 2015, the Board also entered an order for Storer to show
cause why, in view of the Board’s decision on the parties’ substantive
motions, judgment should not be entered against it. Paper 690. Storer
timely responded. Paper No. 691. Although the panel finds Storer’s
response to the order to show cause to be insufficient, Storer’s response to
the order to show cause played no role in the entry of this judgment.

3

II. 1
As Senior Party, Clark is entitled to the presumption under 2
Bd.R. 207(a)(1) that it is the prior inventor. See also Bd.R. 201, definition 3
of senior party. As the Junior Party, Storer therefore bears the burden of 4
establishing a date of inventorship prior to Clark’s accorded benefit date of 5
May 30, 2003. See Bd. Rs. 121(b) and 208(b). By declining to file a 6
priority motion and forgoing the opportunity to prove an earlier date of 7
invention, Storer has effectively abandoned the contest. Storer’s 8
abandonment of the contest is construed as a request for adverse judgment. 9
See Bd.R. 127(b)(4). 10
It is therefore— 11
12
ORDERED that judgment on priority be entered against Junior Party 13
Storer for the subject matter of count 2; 14
15
FURTHER ORDERED that claims 1-12, 17, 18, 20, 33, 34, 36, 38, 16
49-57, 62, 64, and 76-85 of Storer’s involved U.S. Patent No. US 7,608,600 17
B2 be CANCELED, 35 U.S.C. 135(a)
2
; and 18
19
FURTHER ORDERED that a copy of this judgment be entered in the 20
administrative records of Storer’s involved US 7,608,600 B2 patent and 21
Clark’s involved US Appl. No. 11/854,218. 22

2
As was in effect on March 15, 2013. See Pub. L. 112-29, § 3(n),
125 Stat. 284, 293 (2011).
4

FURTHER ORDERED that if a party seeks judicial review, the party 1
must file a notice with the Board (37 C.F.R. § 41.8(b)) within seven days of 2
initiating judicial review. 3
4
We also direct the parties’ attention to Biogen Idec MA, Inc., v. 5
Japanese Foundation for Cancer Research, Civil No. 13–13061–FDS, 2014 6
WL 2167677 (D. Mass. May 22, 2014). 7
8
NOTICE: “Any agreement or understanding between parties to an
interference, including any collateral agreements referred to therein, made in
connection with or in contemplation of the termination of the interference,
shall be in writing and a true copy thereof filed in the Patent and Trademark
Office before the termination of the interference as between the said parties
to the agreement or understanding.” 35 U.S.C. 135(c); see also Bd.R. 205
(settlement agreements).

5

cc (via electronic transmission):
Attorney for Senior Party Clark:

Anthony M. Zupcic
Alicia A. Russo
Daniel S. Glueck
Fitzpatrick, Cella, Harper & Scinto
azupcic@fchs.com
arusso@fchs.com
dglueck@fchs.com

Attorney for Junior Party Storer:

Thomas E. Friebel
Anthony M. Insogna
Dale L. Rieger
Jones Day
TEFriebel@JonesDay.com
AMInsogna@JonesDay.com
DRieger@JonesDay.com