Ex Parte Shustack

Board of Patent Appeals and Interferences

Jun 14, 2005

09142102 (B.P.A.I. Jun. 14, 2005)

As part of Board efforts under the Government Paperwork Elimination Act, signatures1
on papers originating from the Board are being phased out in favor of a completely electronic
record. Consequently, in this case papers originating at the Board will not have signatures. The
signature requirements for the parties have not changed. See, e.g., 37 C.F.R. § 10.18.
The opinion in support of the decision being
entered today is binding precedent of the Trial Procedures Section.
Paper 33
Filed by: Merits Panel
Mail Stop Interference Filed
P.O. Box 1450 14 June 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
_______________
PAUL J. SHUSTACK
Junior Party,
(Patent 6,014,488),
v.
DAVID M. SZUM, CHANDER P. CHAWLA, JAMES R. PETISCE
JOHN T. VANDEBERG, GEORGE PASTERNACK,
TIMOTHY E. BISHOP, PAUL E. SNOWWHITE,
EDWARD P. ZAHORA, and STEPHEN C. LAPIN
Senior Party,
(Application 09/757,533).
_______________
Patent Interference No. 105,228
_______________
Before: FLEMING, Chief Administrative Patent Judge, and
McKELVEY, Senior Administrative Patent Judge, and MEDLEY, Administrative Patent Judge. 1
MEDLEY, Administrative Patent Judge.
- 2 -
Judgment - Request for Adverse - Bd. R. 127(b)
On 2 June 2005, the board received from the party Szum a paper entitled “SZUM
CONCESSION OF PRIORITY (37 C.F.R. 41.127)” (Paper 32). The content of paper 32 is as
follows (emphasis added as underlined):
This is a Concession of Priority of Party Szum.
Party Szum concedes priority of the subject matter of the count in the subject
interference and will accede to adverse judgment as a result thereof, pursuant to [Bd. R]
41.127(b).
Party Szum does not concede priority or, take any position herein, with regard to
any disclosed or claimed subject matter which is set forth in the Szum pending and
involved application, Serial No. 09/757,533, but which does not correspond to the count
or, which would support a claim which would not, if entered, be deemed to correspond to
the count.
The board treats a concession of priority as a request for adverse judgment. Bd. R.
127(b)(3). The estoppel effects of a judgment are provided for in Bd. R. 127(a) which states that:
A judgment disposes of all issues that were, or by motion could have properly been,
raised and decided. A losing party who could have properly moved for relief on an issue,
but did not so move, may not take action in the Office after the judgment that is
inconsistent with that party’s failure to move, except that a losing party shall not be
estopped with respect to any contested subject matter for which that party was awarded a
favorable judgment.
Szum’s attempt to limit the effects of the requested adverse judgment, as set out in the
underscored paragraph, does not prevent or avoid the effect of Bd. R. 127(a). The estoppel
effects apply in full force, no matter how Szum has attempted to limit its concession of priority.
Eli Lilly and Co. v. Cameron, 61 USPQ 1863 (Bd.Pat.App. & Int. 2001).
- 3 -
The underlined portion of Szum’s concession of priority has been accorded no weight and
will be accorded no weight in future prosecution by Szum before the USPTO. Paper 32 of the
official record of the interference file has been modified, such that the limiting paragraph
underlined above is stricken through. The decision to enter judgment against Szum is based
solely upon Szum’s request for a concession of priority, less the underlined portion reproduced
above.
Should either party believe that Szum’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 5) is awarded
against senior party DAVID M. SZUM, CHANDER P. CHAWLA, JAMES R. PETISCE, JOHN
T. VANDEBERG, GEORGE PASTERNACK, TIMOTHY E. BISHOP, PAUL E.
SNOWWHITE, EDWARD P. ZAHORA, and STEPHEN C. LAPIN.
FURTHER ORDERED that senior party DAVID M. SZUM, CHANDER P.
CHAWLA, JAMES R. PETISCE, JOHN T. VANDEBERG, GEORGE PASTERNACK,
TIMOTHY E. BISHOP, PAUL E. SNOWWHITE, EDWARD P. ZAHORA, and STEPHEN C.
LAPIN is not entitled to a patent containing claims 74–80 (corresponding to Count 1) of
application 09/757,533.
FURTHER ORDERED that a copy of this paper shall be made of record in files
of application 09/757,533 and U.S. Patent 6,014,488.
FURTHER ORDERED that if there is a settlement agreement, attention is
directed to 35 U.S.C. § 135(c) and Bd.R. 205.
- 4 -
cc (via overnight delivery - copy of judgment and
copy of paper 32 of the official record):
Attorney for SHUSTACK:
Mr. Andrew Ryan
55 Griffin Road South
Bloomfield, CT 06002
Tel: 860-286-2929
Attorney for SZUM:
Mr. Mark Paulson
Mayer Brown Rowe & Maw LLP
1909 K Street, N.W.
Washington, D.C. 20006-1101
Tel: 202-236-3310