Ex Parte Ring

Board of Patent Appeals and Interferences

Sep 30, 2005

08483749 (B.P.A.I. Sep. 30, 2005)

The opinion in support of the decision being entered today is not binding precedent of the Board.
Paper 33
Filed by: Interference Trial Division Merits Panel
Mail Stop Interference Filed: September 30, 2005
P.O. Box 1450
Alexandria VA 22313-1450
Tel: 571-272-9797
Fax: 571-273-0043
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
ROBERT M. HUDZIAK, H. MICHAEL SHEPARD, AXEL ULLRICH and
BRIAN M. FENDLY
Junior Party
(Application Nos. 09/343,310 and 10/174,806;
real party-in-interest Genentech, Inc.),
v.
DAVID B. RING, ARTHUR E. FRANKEL, WALTER LAIRD and
MICHAEL J. BJORN
Senior Party
(Application Nos. 08/477,512 and 08/486,817 and
Patent Nos. 4,753,894; 5,169,774 and 6,054,561;
real party-in-interest Chiron, Corp.).
Patent Interference No. 105,267 (RES)

Before: SCHAFER, MEDLEY and TIERNEY, Administrative Patent Judges.
Judgment - Bd.R. 127
Pursuant to the panel decision on priority (Paper 32), it is
ORDERED that judgment as to the subject matter of Count 1 (Paper 1, p. 11) is awarded
against both parties;
FURTHER ORDERED that junior party, Genentech, Inc. (real party-in-interest of named
inventors ROBERT M. HUDZIAK, H. MICHAEL SHEPARD, AXEL ULLRICH and BRIAN M.
FENDLY) is not entitled to a patent containing Claims 1, 40 and 41 of Application 10/174,806 or
Claims 40-48 Application 09/343,310;
FURTHER ORDERED that senior party, Chiron Corp. (real party-in-interest of named
inventors DAVID B. RING, ARTHUR E. FRANKEL, WALTER LAIRD and MICHAEL J.
-2-
BJORN) is not entitled to a patent containing Claims 1-7, 9-12 and 20-29 of Patent 4,753,894;
Claim 1 of Patent 5,169,774; Claims 1-31 of Patent 6,054,561; Claims 88-115 of Application
08/486,817 or Claims 88-108 and 130-150 of Application 08/477,512;
FURTHER ORDERED that a copy of this judgment be made of record in the files of
Applications 09/343,310; 10/174,806; 08/477,512 and 08/486,817 and Patents 4,753,894; 5,169,774
and 6,054,561;
FURTHER ORDERED that if there is any settlement agreement which has not been filed,
attention is directed to 35 U.S.C. § 135(c) and 37 CFR § 41.205.
.
/Richard E. Schafer/
ADMINISTRATIVE PATENT JUDGE
/Sally C. Medley/
ADMINISTRATIVE PATENT JUDGE
/Michael P. Tierney/
ADMINISTRATIVE PATENT JUDGE
BOARD OF PATENT
APPEALS AND
INTERFERENCES
cc: (via facsimile and overnight mail)
Counsel for Genentech:
Jeffrey P. Kushan, Esq.
SIDLEY AUSTIN BROWN & WOOD LLP
1501 K Street, N.W.
Washington, D.C. 20005
Fax: 202-736-8711
Counsel for Chiron:
Thomas E. Ciotti, Esq.
MORRISON & FOERSTER LLP
755 Page Mill Road
Palo Alto, CA 94304-1018
Fax: 650-494-0792