Chan et al.v.Chan et al. V. Yang et al.

Patent Trial and Appeal Board

Feb 3, 2015

10906303 (P.T.A.B. Feb. 3, 2015)

BoxInterference@uspto.gov Filed Filed @
571.272.4683 Filed: February 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PUI-KWONG CHAN, MAY SUNG MAK, and YUN WANG
Junior Party
(Patents 7,262,285 and 7,524,824),

v.

BAIZHEN YANG, SONGJIAN WANG, and CONGFU ZHAO
Senior Party
(Application 11/631,637).

Patent Interference No. 105,982)
(Technology Center 1600)

JUDGMENT
37 C.F.R. § 127(b)

Before SALLY G. LANE, DEBORAH KATZ, and HUNG H. BUI, 1
Administrative Patent Judges. 2
3
KATZ, Administrative Patent Judge. 4
5
Following the Decision on Motions (see Paper 83), this interference 6
proceeded to a priority phase (see Paper 84). Junior Party Chan did not file a 7
priority motion, but instead, on 23 January 2015, filed a paper entitled “Chan 8
Abandonment of the Contest.” (Paper 86.) An abandonment of contest is 9

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construed as a request for adverse judgment. (37 C.F.R. § 127(b)(4); see 1
Memorandum, Paper 82; see also Judgment Pursuant to 37 C.F.R. § 1.662, 2
Woosley v. Heeres, Interference 104,079, Paper 29, 1999 WL 33219503 (B.P.A.I. 3
April 5, 1999) (precedential).) 4
Because Chan has not put forth argument or evidence showing that it either 5
reduced the subject matter of the Count to practice before Senior Party Yang or 6
conceived of the subject matter first and was diligent in reducing it to practice, 7
judgment is entered against Junior Party Chan. 8
Accordingly, it is ORDERED that Chan patent 7,262,285, claims 1, 3, 4, 6, 9
7, 9, 10, 12, 13, and 15, and Chan patent 7,524,824, claims 1, 3, 5, 7, 9-13, 16, 17, 10
19, and 21, be CANCELED. 35 U.S.C. § 135(a).
1
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It is further ORDERED that a copy of this judgment be entered into the 12
administrative records of Chan patents 7,262,285 and 7,524,824 and Yang 13
application 11/631,637. 14
It is further ORDERED that a party seeking judicial review timely serve 15
notice on the Director of the United States Patent and Trademark Office. 37 C.F.R. 16
§§ 90.1 and 104.2. See also Bd. R. 8(b). Attention is directed to Biogen Idec MA, 17
Inc., v. Japanese Foundation for Cancer Research, 2014 WL 2167677 (D. Mass. 18
2014). 19
It is noted that although Junior Party Chan alleges that the compound of the 20
Count in this interference is not patentable under 35 U.S.C. § 101 and that there are 21
potential issues of forgery and/or fraud regarding the alleged death of one of the 22
inventors named on the Yang application (Abandonment of the Contest, Paper 86), 23
authorization was not granted to file a motion before the Board on either of these 24

1
Patent interferences continue under the relevant statutes in effect on
15 March 2013, Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).

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issues. (See Order Authorizing Motions and Setting Times, Paper 25, at 2-3 and 4-1
5; Order- Further Briefing, Paper 77, at 2.) 2
It is further noted that 3
[a]ny agreement or understanding between parties to an interference, 4
including any collateral agreements referred to therein, made in 5
connection with or in contemplation of the termination of the 6
interference, shall be in writing and a true copy thereof filed in the 7
Patent and Trademark Office before the termination of the 8
interference as between the said parties to the agreement or 9
understanding. 10
11
35 U.S.C. 135(c); see also Bd.R. 205 (settlement agreements). 12
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cc (via overnight delivery): 1
2
Attorney for Junior Party Chan 3
4
Rong Xie 5
Albert Wai-Kit Chan 6
Hon-Man Lee 7
Law Offices of Albert Wai-Kit Chan, PLLC 8
chank@kitchanlaw.com 9
docketing@kitchanlaw.com 10
11
Attorney for Senior Party Yang 12
13
Stephanie D. Scruggs 14
Michael Schwarz 15
Dennis Rogers 16
Thomas G. Wiseman 17
Smith Gambrell & Russell, LLP 18
sscruggs@sgrlaw.com 19
twiseman@sgrlaw.com 20
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