Ex Parte Liu

Board of Patent Appeals and Interferences

Sep 16, 2005

10376845 (B.P.A.I. Sep. 16, 2005)

The conference call was held on 6 September 2005 at approximately 9:30 am. 1
Participating in the call were Otto Lee for Liu, Dr. Fei-Fei Chao and Gary Hnath, counsel for Liu
and Chung, and Sally Gardner Lane, Administrative Patent Judge (APJ).
Paper 33
Filed by: Merits Panel
Mail Stop Interference Filed
P.O. Box 1450 16 September 2005
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
_______________
XIN LIU
and CHEE-KEUNG CHUNG
(Patent 6,316,002 and Application 10/757,722)
v.
XIN LIU
(Application 10/376,845)
_______________
Patent Interference No. 105,060
_______________
Before Lee, Torczon, and Lane, Administrative Patent Judges.
Lane, Administrative Patent Judge.
Judgment - Request for Adverse - Bd.R. 127(b)
Liu has filed a paper stating its intent to expressly abandon reissue application
10/376,845, i.e., the involved Liu application. (Paper 32). Liu’s filing is consistent with
discussion during a conference call in which Liu indicated that it would no longer be alleging that
Xin Liu should be named as sole inventor of the subject matter of the counts. The parties agreed1
Claims 23 through 32 were added by an amendment (Paper 21) that was2
authorized by the APJ (Paper 20 at 3).
2
that if Liu was no longer contesting inventorship, then there was no reason to continue the
interference.
Liu’s actions are construed to be a request for adverse judgment. Bd. R. 127(b)(1) and
(4).
Upon consideration of the record and for reasons given, it is
ORDERED that judgment is entered against XIN LIU as to each count of the
interference, i.e., counts 23 through 54;
FURTHER ORDERED that XIN LIU is not entitled to a patent containing claims
1 through 32 of application 10/376,845, which correspond to counts 23 through 54, respectively. 2
(Paper 28 at 3-4);
FURTHER ORDERED that a copy of this judgment shall be entered into the file
of patent 6,316,002, application 10/757,722, and application 10/376,845; and
FURTHER ORDERED that, if there is a settlement agreement, the parties are
directed to 35 USC § 135(c) and Bd.R. 205(a).
3
cc (via facsimile and first class mail):
Counsel for Liu and Chung:
Dr. Fei-Fei Chao
BINGHAM McCUTCHEN LLP
1120 20 Street, N.W. th
Suite 800
Washington, DC 20036
Tel: 202-778-6150
Fax: 202-778-6155
Counsel for Liu:
Otto O. Lee
Intellectual Property Law Group LLP
12 South First Street
Suite 1205
San Jose, CA 95113
Tel: 408-286-8933
Fax: 408-286-8932