Bakerv.Adams et al.

Board of Patent Appeals and Interferences

Apr 21, 2000

08299931 (B.P.A.I. Apr. 21, 2000)

Paper No. 22
THIS OPINION IS NOT BINDING PRECEDENT OF THE BOARD.
35 U.S.C. § 135(c) Notice: Failure to file a copy of any agreement regarding the
termination of this proceeding may render the agreement and any resulting patents
Trial Section Merits Panel
BOX INTERFERENCE
WASHINGTON DC 20231
Telephone: 703-308-9797
Facsimile: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
BRENDA F. BAKER
(5,643,780),
Junior Party,
v.
THOMAS H. ADAMS
and MARK A. REYNOLDS
(08/299,931),
Senior Party.
_______________
Interference No. 104,452
_______________
Before SCHAFER, LEE, and TORCZON, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
JUDGMENT
(PURSUANT TO 37 CFR § 1.662)
INTRODUCTION
Baker has filed a request for adverse judgment (Paper
No. 20). The request is accompanied by a settlement agreement
filed under 35 U.S.C. § 135(c) (Paper No. 21), by a statutory
disclaimer (attached) of Baker's 5,643,780 patent claims 4
Interference No. 104,452 Paper No. 22
Baker v. Adams Page 2
and 7, the only claims designated as corresponding to the sole
count, and by a notice that ISIS Pharmaceuticals Inc. is now
the assignee of Adams' 08/299,931 application as well (Paper
No. 19). The original copy of the disclaimer has not yet been
matched with the patent file.
ORDER
Upon consideration of the record of this interference, it
is—
ORDERED that judgment on priority as to Count 1 is
awarded against junior party Baker;
FURTHER ORDERED that junior party Baker is not entitled
to a patent containing claims 4 and 7 of its 5,643,780 patent,
which correspond to count 1;
FURTHER ORDERED that, based on the record before us,
senior party Adams is entitled to a patent containing claims
1-7 and 10-16, which correspond to count 1;
FURTHER ORDERED that a copy of this decision be given a
paper number and be entered in the administrative record of
Baker's 5,643,780 patent and of Adams' 08/299,931 application;
and
Interference No. 104,452 Paper No. 22
Baker v. Adams Page 3
FURTHER ORDERED that the administrative record of Baker's
5,643,780 patent be returned to the appropriate technology
center for appropriate processing of the statutory disclaimer.
RICHARD E. SCHAFER
Administrative Patent Judge
JAMESON LEE PATENT
Administrative Patent Judge APPEALS AND
RICHARD TORCZON
Administrative Patent Judge
BOARD OF
INTERFERENCES
Interference No. 104,452 Paper No. 22
Baker v. Adams Page 4
Counsel for Baker
(real party-in-interest, ISIS Pharmaceuticals Inc.):
Francis A. Paintin
John W. Caldwell
WOODCOCK WASHBURN KURTZ MACKIEWICZ & NORRIS
1 LIBERTY PL FL 46
PHILADELPHIA PA 19103
Fax: 215-568-3439
Counsel for Adams
(real parties-in-interest: ISIS Pharmaceuticals Inc.):
Ned A. Israelsen
Nancy W. Vensko
KNOBBE, MARTENS, OLSON & BEAR, LLP
620 NEWPORT CTR DR FL 16
NEWPORT BEACH CA 92660
Fax: 619-235-0176