10587094 - (J) (P.T.A.B. Feb. 27, 2019)

Weston et al.v.Li et al.

Patent Trials and Appeals BoardFeb 27, 2019

10587094 - (J) (P.T.A.B. Feb. 27, 2019)

BoxInterferences@uspto.gov Tel: 571-272-9797 Entered: February 27, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Eric Q. Li and Quian Diao Junior Party (Patent 7,685,077 C1), v. Jason Weston and Isabelle Guyon, Senior Party (Application 12/994,197). (Patent Interference No. 106,066) (JTM) (Technology Center 2100) _______________ Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ, Administrative Patent Judges. MOORE, Administrative Patent Judge. JUDGMENT - Bd. R. 127(a) Interference 106,066 (JTM) – Li v. Weston – Judgment 2 The Board has dismissed all pending motions. Paper 148. 1 Li’s earliest alleged priority date of July 20, 2006 (Paper 23) is after 2 Weston’s accorded priority date of January 31, 2005. 3 Accordingly, Li cannot prevail on priority. 4 Accordingly, 5 It is ORDERED that judgment on priority is entered against junior party Li 6 as to Count 1, the sole Count, of the interference. Paper 1, 5. 7 FURTHER ORDERED that claims 1–15 of Li patent 7,685,077 C1 are 8 cancelled. 35 U.S.C. § 135(a); 9 FURTHER ORDERED that the parties are directed to 35 USC § 135(c) and 10 Bd. R. 205 regarding the filing of settlement agreements; 11 FURTHER ORDERED that a party seeking judicial review timely serve 12 notice on the Director of the United States Patent and Trademark Office. 13 37 C.F.R. §§ 90.1 and 104.2. See also Bd. R. 8(b); 14 Attention is directed to Biogen Idec MA, Inc., v. Japanese Foundation for 15 Cancer Research, 785 F.3d 648, 654–57 (Fed. Cir. 2015) (determining that pre-16 AIA § 146 review was eliminated for interference proceedings declared after 17 September 15, 2012); and 18 FURTHER ORDERED that a copy of this judgment be entered into the 19 administrative records of the involved Li patent and Weston application. 20 Interference 106,066 (JTM) – Li v. Weston – Judgment 3 cc (electronic delivery): Attorneys for Junior Party Li – (Intel Corporation) R. Danny Huntington William N. Hughet Rothwell, Figg, Ernst & Manbeck, P.C. dhuntington@rfem.com whughet@rfem.com Amanda J. Tessar Kourtney Mueller Merrill Perkins Coie, LLP atessar@perkinscoie.com kmerrill@perkinscoie.com Attorneys for Senior Party Weston – (Health Discovery Corporation) Eleanor Musick Scott H. Davison Musick Davison, LLP eleanor@mdiplaw.com scott@mdiplaw.com Stuart S. Levy Stuart S. Levy, LLC stuartslevyllc@gmail.com BoxInterferences@uspto.gov Tel: 571-272-9797 Entered: February 27, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Eric Q. Li and Quian Diao Junior Party (Patent 7,685,077 C1), v. Jason Weston and Isabelle Guyon, Senior Party (Application 12/994,197). (Patent Interference No. 106,066) (JTM) (Technology Center 2100) _______________ Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON MOTIONS 37 C.F.R. § 41.125 Interference 106,066 (JTM) – Li v. Weston – Motions Decision 2 I. Background 1 An interference was declared under 35 U.S.C. § 135(a). Paper 1. Eric Q. Li 2 and Quian Diao (“Li”) were assigned the status of junior party with an initial 3 application filing date of July 20, 2006. Id., 6. Jason Weston and Isabelle Guyon. 4 (“Weston”) were assigned the status of senior party with an initial application 5 filing date of January 31, 2005. Id. 6 The interference count is as follows (with a minor typographical correction): 7 Count 1. A method, comprising: 8 determining a value for each feature in a group of features 9 provided by a training data; 10 eliminating at least one feature with one of a minimum value 11 and a maximum value from the group; 12 retrieving a kernel data from a buffer; 13 subtracting a matrix from the kernel data to provide an updated 14 kernel data, each component of the matrix comprising a dot product of 15 two of training samples provided by at least a part of the training data 16 that corresponds to the eliminated feature; 17 updating the value for each feature of the group based on the 18 updated kernel data; 19 repeating of eliminating the at least one feature from the group 20 and updating the value for each feature of the group until a number of 21 features in the group reaches a predetermined value to generate a 22 feature ranking list; 23 recognizing a new data corresponding to the group of features 24 with the feature ranking list. 25 26 Paper 1, 5. 27 Following a conference call on November 9, 2016, the following motions 28 were authorized in an order dated November 15, 2016 (Paper 17): 29 Li Motion 1 – to redefine the scope of the interference to add claims 1–38 of 30 Weston Patent 8,095,483 (“the ’483 patent”), claims 1–19 of Weston Patent 31 Interference 106,066 (JTM) – Li v. Weston – Motions Decision 3 7,542,959 (“the ’959 patent”), and claims 1–23 of Weston Patent 7,117,188 (“the 1 ’188 patent”). Id, 2. 2 Li Motion 2 – seeking benefit for Count 1 of the filing date of International 3 Patent Application No. PCT CN2005 001242, filed August 11, 2005. Id. 4 Li Motion 4 – seeking judgment of unpatentability of the Weston claims 5 corresponding to Count 1, on the basis of 35 U.S.C. § 101. Id. 6 Weston Motion 1 – seeking benefit for Count 1 of the filing dates of PCT 7 Application No. PCT/US2002/035576, filed November 7, 2002; U.S. Application 8 No. 10/057,849, filed January 24, 2002; and US Provisional Applications 9 60/263,696, 09/633,410, and 60/191,219. 10 Weston Motion 4 – seeking judgment of unpatentability under 35 U.S.C. 11 §101 as being directed to non-statutory subject matter. 12 Certain (but not all) authorized motions, oppositions, and replies, along with 13 exhibit lists and the exhibits, have been filed by the parties. The motions are ready 14 for decision. We find that the record is complete enough to obviate the need for 15 oral argument. Li’s and Weston’s requests for Oral Argument (Papers 142 and 16 143) are therefore denied. 17 Weston filed a priority statement relying upon its earliest claimed priority 18 date of February 24, 2000. Paper 91. 19 Li filed a priority statement indicating it was relying on the benefit date 20 accorded in the Declaration (Paper 1), namely July 20, 2006. Paper 23. 21 Consequently, given that the benefit issues are dispositive, we take up the benefit 22 and priority issues first. 37 C.F.R. § 41.125(a). 23 24 25 Interference 106,066 (JTM) – Li v. Weston – Motions Decision 4 II. Li Motion 2 – Benefit 1 2 Li elected not to file authorized Li Motion 2 for benefit. 3 Li states: 4 Junior Party Li requested, and was authorized to file, a motion under Bd. R. 5 121(a)(1)(ii) and Standing Order ¶ 208.4.1 to be accorded the benefit for 6 Count 1 of the filing date of International Patent Application No. PCT 7 CN2005 001242. Paper No. 14, 2; Paper No. 17, 2, 4. This authorized 8 motion was styled Li Motion 2. Paper No. 17, 2, 4. Li hereby provides 9 notice that it will not be filing Li Motion 2. 10 11 Paper 22, 1. 12 13 In the absence of Li Motion 2, it becomes readily apparent that Li cannot 14 prevail on priority in this case. In fact, Li admits as much. 15 In Li Opposition 1, Li states: 16 Li is not contesting priority of invention in this interference, and the January 17 31, 2005 priority date already accorded to Weston predates Li’s July 20, 18 2006 accorded priority date. Thus, even if Weston’s earliest requested 19 priority date of August 2000 were awarded, it would have no effect on a 20 priority determination in this interference. 21 22 Paper 125, 1. 23 Inasmuch as we “shall determine” issues of priority and “may determine” 24 questions of patentability, we next consider whether we should exercise our 25 discretion to address the remaining issues in this interference. 35 U.S.C. § 135(a). 26 27 28 29 Interference 106,066 (JTM) – Li v. Weston – Motions Decision 5 III. Other Motions 1 After Li Paper 22 was filed, Weston indicated it was not filing Weston 2 Motion 4 regarding unpatentability of Li’s claims. Paper 63. 3 That leaves, in terms of motions pending for resolution: 4 Weston Motion 1 – seeking benefit of the filing dates of PCT Application 5 No. PCT/US2002/035576, filed November 7, 2002; U.S. Application No. 6 10/057,849, filed January 24, 2002; and US Provisional Applications 60/263,696, 7 09/633,410, and 60/191,219. As Weston will prevail on priority, and we take up 8 no other motions, we need not decide this motion. Weston Motion 1 is therefore 9 DISMISSED. 10 Weston thus has no motions remaining in this interference. 11 Li Motion 1 – to redefine the scope of the interference to add claims 1–38 of 12 Weston Patent 8,095,483 (“the ’483 patent”) claims 1–19 of Weston Patent 13 7,542,959 (“the ’959 patent”) and claims 1–23 of Weston Patent 7,117,188 (“the 14 ’188 patent”). Id, 2. Given that Li has conceded priority, we no longer see the 15 need to decide this motion, as it adds numerous patents, claims, and complexity to 16 the proceedings, which determination has become superfluous in light of the 17 discharge of this issue of priority in this proceeding. Moreover, but not the sole 18 basis for our decision, we are dubious of the legal concept of maintaining a patent-19 patent interference within the Office, which this motion essentially requests. 20 We therefore DISMISS Li Motion 1. 21 Li Motion 4 – seeking judgment of unpatentability of the Weston claims 22 corresponding to Count 1, on the basis of 35 U.S.C. § 101. Id. 23 This is the central issue remaining before the Board for resolution. Should 24 we exercise our discretion under 35 U.S.C. § 135(a) and consider the issues raised 25 Interference 106,066 (JTM) – Li v. Weston – Motions Decision 6 in Li Motion 4 when they are unnecessary to the determination of priority? After 1 carefully considering the facts and posture of this particular case, we determine 2 that we should not. 3 On the one hand, the issues were briefed to the Board. 4 On the other hand, the issues are unrelated to the central issue of priority. 5 Furthermore, had it been made clear from the outset that Li would not file Li 6 Motion 2 (which was, ultimately, the sole reason for proceeding in this 7 interference) we would have entered judgment much earlier and not authorized the 8 motions at all. Additionally, given the intervening development of caselaw and 9 official guidance under 35 U.S.C. § 101, we would require updated briefing on this 10 matter as to the state of the law. Finally, this matter has been pending sufficiently 11 long as to make that route unappealing from a cost and additional delay standpoint. 12 Consequently, we exercise our discretion to DISMISS Li Motion 4, as the 13 central issue of priority has been addressed in this proceeding. 14 15 VI. Order 16 Li Motion 1 is DISMISSED. 17 Li Motion 4 is DISMISSED. 18 Weston Motion 1 is DISMISSED. 19 A judgment against Junior Party Li accompanies this decision. 20 Interference 106,066 (JTM) – Li v. Weston – Motions Decision 7 cc (electronic delivery): Attorneys for Junior Party Li – (Intel Corporation) R. Danny Huntington William N. Hughet Rothwell, Figg, Ernst & Manbeck, P.C. dhuntington@rfem.com whughet@rfem.com Amanda J. Tessar Kourtney Mueller Merrill Perkins Coie, LLP atessar@perkinscoie.com kmerrill@perkinscoie.com Attorneys for Senior Party Weston – (Health Discovery Corporation) Eleanor Musick Scott H. Davison Musick Davison, LLP eleanor@mdiplaw.com scott@mdiplaw.com Stuart S. Levy Stuart S. Levy, LLC stuartslevyllc@gmail.com

Weston et al. V. Li et al.