Ex Parte Caillat

Board of Patent Appeals and Interferences

Jul 5, 2005

09139865 (B.P.A.I. Jul. 5, 2005)

-1-
Paper 51

Merits Panel Entered: 5 July 2005
Mail Stop Interference
P.O. Box 1450
Alexandria Va 22313-1450
Tel: 571-272-9797
Fax: 571-273-0042
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
JEAN-LUC CAILLAT
Junior Party
(Patent 6,206,652),
v.
ALEXANDER LIFSON
Senior Party
(Application 09/921,334).
_______________
Patent Interference No. 105,288
_______________
Before: LEE, MEDLEY and MOORE, Administrative Patent Judges.
MEDLEY, Administrative Patent Judge.
Judgment - Bd.R. 127(b)
On 29 June 2005, the board received from the party Caillat “CAILLAT’S 37 CFR
41.127(2)(B) REQUEST FOR ADVERSE JUDGMENT” (Paper 47), in which Caillat requests
and agrees to entry of adverse judgment and “SENIOR PARTY LIFSON’S REQUEST FOR
ENTRY OF ADVERSE JUDGMENT” in which Lifson requests and agrees to entry of adverse
judgment (Paper 48).
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In Lifson’s request for adverse judgment, Lifson states that it requests entry of adverse
judgment with respect to the count and thus with respect to Lifson’s claims 4-6, 8-10, 12, 14, 15,
17-19, 22, 24, 25 and 29-37 (Paper 48). The list of claims is not an accurate list of those Lifson
claims that are designated as corresponding to the count (Paper 1 at 4). To the extent that Lifson
is attempting to limit the effects of the requested adverse judgment, such attempts have been
accorded no weight and will be accorded no weight in future prosecution by Lifson before the
USPTO. The estoppel effects of Bd.R. 127(a) apply in full force, no matter how Lifson has
attempted to limit its concession of priority. Eli Lilly and Co. v. Cameron, 61 USPQ 1863
(Bd.Pat.App. & Int. 2001). The decision to enter judgment against Lifson is based solely upon
Lifson’s request for adverse judgment.
Should either party believe that Lifson’s request for adverse judgment has been
“misapprehended,” the party may file a request for rehearing under Bd.R. 127(d).
Upon consideration of the record, it is
ORDERED that judgment on priority as to Count 1 (Paper 1 at 4) is awarded
against junior party JEAN-LUC CAILLAT.
FURTHER ORDERED that junior party JEAN-LUC CAILLAT is not entitled to
a patent containing claims 1-6, 11, 14-17 and 21-27 (corresponding to Count 1) of U.S. patent
6,206,652.
FURTHER ORDERED judgment on priority as to Count 1 (Paper 1 and 4) is
awarded against senior party ALEXANDER LIFSON.
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FURTHER ORDERED that senior party ALEXANDER LIFSON is not entitled
to a patent containing claims 4-12, 14, 15, 17-19, 21, 22, 24, 25, 27 and 29-38 (corresponding to
Count 1) of application 09/921,334.
FURTHER ORDERED that a copy of this paper shall be made of record in files
of application 09/921,334 and U.S. Patent 6,206,652.
FURTHER ORDERED that if there is a settlement agreement, attention is
directed to 35 U.S.C. § 135(c)) and Bd.R. 205.
)
/ss/ Jameson Lee )
JAMESON LEE )
Administrative Patent Judge )
) BOARD OF PATENT
/ss/ Sally C. Medley ) APPEALS
SALLY C. MEDLEY ) AND INTERFERENCES
Administrative Patent Judge)
)
/ss/ James T. Moore )
JAMES T. MOORE )
Administrative Patent Judge )

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