Changv.Luciw et al.

Board of Patent Appeals and Interferences

Sep 28, 2007

08403588 (B.P.A.I. Sep. 28, 2007)

BoxInterferences@uspto.gov
571-272-4683 Filed: June 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

PAUL A. LUCIW,
and
DINO DINA,

Junior Party
(Patent 6,531,276),

v.
NANCY T. CHANG,
ROBERT C. GALLO, and FLOSSIE WONG-STAAL,

Senior Party
(Application 06/693,866).
__________________

Patent Interference No. 105,291
__________________

Before: RICHARD E. SCHAFER, RICHARD TORZON, and SALLY
GARDNER LANE, Administrative Patent Judges.

LANE, Administrative Patent Judge.

Judgment – Bd.R. 127(a)

2
The United District Court for the District of Columbia has entered an order 1
of final judgment in the matter of Novartis Vaccines and Diagnostics, Inc. v. 2
United States Department of Health and Human Services, et al., Case No. 07-cv-3
0038.
1
A copy of the final judgment has been entered into the record of the 4
interference. (District Court Final Judgment, Paper 149). 5
In the final judgment the Court ordered that “based on new evidence jointly 6
submitted by the parties, the Board’s decision denying Novartis’s motions to 7
designate certain Novartis claims as not corresponding to the interference counts in 8
Interference Nos. 105,291 and 105,289 is REVERSED”. The Court otherwise 9
dismissed the matter on the basis that Novartis could not prevail on priority 10
because “neither Pasteur nor Novartis can prevail on priority of invention because 11
the NIH was the first to invent the subject matter in dispute.” (District Court Final 12
Judgment at 2). 13
As a result of the final judgment Luciw claims 2-4 and 7-45 no longer 14
should be designated as corresponding to the Count. Luciw claims 5 and 6 remain 15
corresponding to the Count. 16
17
18

1
We understand the real party in interest for Luciw now to be Novartis
Vaccines and Diagnostics, Inc. (Novartis) and the real party in interest for Chang
to be The United States Department of Health and Human Services. (NIH).

3
It is 1
ORDERED that the judgment of the Board entered on 20 September 2001 2
(Board Judgment, Paper 144) is modified by striking lines 1-3 on Page 2 and 3
substituting therefor 4
“FURTHER ORDERED that junior party PAUL A. LUCIW 5
and DINO DINA is not entitled to a patent containing claims 5 and 6 6
of patent 6,531,276, which claims correspond to Count 1”; 7
8
FURTHER ORDERED that the Board Judgment is not otherwise modified; 9
and 10
FURTHER ORDERED that a copy of this judgment shall be entered into the 11
administrative records of the involved Luciw patent and Chang application. 12
13
14
15
16
4
cc (via electronic mail): 1
2
Counsel for LUCIW: 3
4
Matthew I. Kreeger, Esq. 5
Morrison & Foerster, LLP 6
425 Market Street 7
San Francisco, CA 94105 8
Email: mkreeger@mofo.com 9
10
Counsel for CHANG: 11
12
Guy Chambers, Esq. 13
Townsend and Townsend and Crew, LLP 14
Two Embarcadero Center 15
8
th
Floor 16
San Francisco, CA 94111-3834 17
Email: gwchambers@townsend.com 18
Email: swparmelee@townsend.com 19
20
Counsel for ALIZON: 21
22
Email: arrigos@finnegan.com 23
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