Tobinickv.Tobinick V. Le et al. V. Le et al.

Board of Patent Appeals and Interferences

Jun 21, 2012

10227488 - (S) (B.P.A.I. Jun. 21, 2012)

Mail Stop Interference Paper 232
P.O. Box 1450 Filed: 26 September 2013
Alexandria, VA 22313-1450
Tel: 571-272-4683
Fax: 571-273-0042

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

EDWARD L. TOBINICK
Junior Party
(Patents 6,419,944 and 6,537,549),

v.

JUNMING LE, JAN VILCEK, PETER DADDONA,
JOHN GHRAYEB, DAVID KNIGHT,
and SCOTT SIEGEL,
Senior Party
(Application Nos. 10/227,488 and 10/665,971).

Patent Interference No. 105,841
(Technology Center 1600)

Judgment
35 U.S.C. § 146

Before RICHARD TORCZON, SALLY GARDNER LANE, and DEBORAH KATZ,
Administrative Patent Judges.

Opinion by KATZ, Administrative Patent Judge. Concurring opinion by TORCZON,
Administrative Patent Judge.

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The United States District Court for the Eastern District of Virginia adopted the findings 1
of fact and recommendations of the United States Magistrate Judge that each of Tobinick’s 2
claims involved in this Interference is patentably distinct from each of Le’s involved claims and 3
that none of the involved Tobinick claims interferes with Le’s involved claims. (Tact IP LLC v. 4
Janssen Biotech, Inc., No. 1:12-cv-909 (E.D. Va. 5 August 2013) (judgment) (Paper 229), 5
referring to Proposed Findings of Fact and Recommendations, entered 19 July 2013, at 34.) 6
It is Ordered that the Judgment entered 21 June 2012 in this Interference (Paper 7
228) is vacated. 8
It is further Ordered that pursuant to the district court judgment there is no interference-9
in-fact between the involved claims of Tobinick patents 6,419,944 and 6,537,549 and the 10
involved claims of Le applications 10/227,488 and 10/665,971. 11
It is further Ordered that a copy of this judgment and the Judgment of the United States 12
District Court for the Eastern District of Virginia be entered into the administrative records of 13
Tobinick patents 6,419,944 and 6,537,549 and Le applications 10/227,488 and 10/665,971. 14
It is further Ordered that the parties are directed to 35 USC § 135(c) and Bd. R. 15
205 regarding the filing of settlement agreements. 16

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TORCZON, Administrative Patent Judge, concurring.
I concur because the law of the case is clear. I write separately, however, to underline the
basis of the decision: Tobinick's unchallenged ex parte affirmative representations to the
magistrate judge at the district court. It is not supposed to work that way.
The courts and the agency have different missions. The court adjudicates disputes
between parties, while the agency determines patentability in the public interest. Mercoid Corp.
v. Mid-Continent Inv. Co., 320 U.S. 661, 665 (1944) ("It is the public interest which is dominant
in the patent system."). It is not clear why Le's real parties-in-interest and the government did
not appear in the civil action. Despite Le's non-appearance, however, it did not really lose the
civil action: it still has its patent applications. If Le's applications issue, then there will be two
sets of patents with different owners directed to inventions that appear to be the same but-for
the magistrate's reliance on Tobinick's unchallenged ex parte affirmative representations. Under
these circumstances, it is not clear that there was an actual case or controversy between the
parties because both walked away winners. To the extent that Tobinick's unchallenged ex parte
affirmative representations could have been rebutted, the only loser is the public interest, which
was not represented in the civil action.

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cc (via e-mail):

Attorney for Tobinick:

Robert W. Hahl, Esq.
Richard A. Neifeld, Esq.
Neifeld IP Law, PC
Email: rhahl@neifeld.com
Email: rneifeld@neifeld.com

Attorney for Le:

Joseph Lucci, Esq.
S. Maurice Valla, Esq.
Woodcock Washburn LLP
Email: lucci@woodcock.com
Email: svalla@woodcock.com