Dung et al.v.Buehler et al.

Patent Trial and Appeal Board

Dec 19, 2013

11866840 (P.T.A.B. Dec. 19, 2013)

BoxInterferences@uspto.gov Paper 293
Telephone: 571-272-4683 Entered: 19 December 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
____________________

Patent Interference 105,893 McK
Technology Center 1600
____________________

JEN-SEN DUNG, ERNO M. KESKENY
and JAMES J. MENCEL,

Patent 7,851,482 B2,
Junior Party,

v.

HENRY J. BUEHLER, WILLIAM E. DUMMITT
ANTHONY MANNINO, DENNIS C. AUBUCHON and HONG GU,

Application 11/915,606,
Senior Party.
____________________

Before: FRED E. McKELVEY, RICHARD E. SCHAFER, and
DEBORAH KATZ, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

JUDGMENT
Upon consideration of Dung Request for Adverse Judgment 1
(Paper 292), it is 2
2

ORDERED that Dung Motion 1 (Paper 103—seeking 1
judgment based on an alleged lack of written description), Dung Motion 2 2
(Paper 104—seeking judgment based on priority), and Buehler Motion 2 3
(Paper 109—seeking judgment based on priority) are dismissed as moot. 4
FURTHER ORDERDED that judgment on priority as to 5
Count 1 (the sole count in the interference; Paper 89, page 7) is awarded 6
against junior part Jen-Sen Dung, Erno M. Keskeny, and James J. Mencel 7
(the real party in interest being Endo Pharmaceuticals, Inc. (Paper 9)). 8
FURTHER ORDERED that Jen-Sen Dung, Erno M. Keskeny, 9
and James J. Mencel and Endo Pharmaceuticals, Inc., are not entitled to a 10
patent containing claims 1-3 and 19-21 (corresponding to Count 1) of: 11
U.S. Patent 7,851,482 B2, 12
issued 14 Dec. 2011, 13
based on application 11/866,840, 14
filed 3 Oct. 2007 15
FURTHER ORDERED that claims 1-3 and 19-21 of U.S. 16
Patent 7,851,482 B2 are cancelled. 35 U.S.C. § 135(a). 17
FURTHER ORDERED that if there is any settlement 18
agreement in addition to that revealed in Paper 79 and Paper 83, attention is 19
directed to 35 U.S.C. § 135(c). 20
FURTHER ORDERED that a copy of this JUDGMENT shall 21
be placed in the files of (1) Dung U.S. Patent 7,851,482 B2 and (2) Buehler 22
application 11/915,606, filed 27 Nov. 2007. 23
FURTHER ORDERED that the Clerk is authorized to distribute 24
the files upon entry of this JUDGMENT. 25
26
27
28
3

Counsel for Dung: 1
2
R. Danny Huntington, Esq. 3
Sharon E. Crane, Ph.D., Esq. 4
ROTHWELL, FIGG, ERNST & MANBECK, P.C. 5
dhuntington@rfem.com 6
scrane@rfem.com 7
8
Counsel for Buehler: 9
10
Todd R. Walters, Esq. 11
Erin M. Dunston, Esq. 12
Christopher L. North, Ph.D., Esq. 13
BUCHANAN INGERSOLL & ROONEY PC 14
todd.walters@bipc.com 15
erin.dunston@bipc.com 16
christopher.north@bipc.com 17