Gray et al.v.Heeres et al.Download PDFBoard of Patent Appeals and InterferencesApr 5, 199908341266 (B.P.A.I. Apr. 5, 1999) Copy Citation THIS OPINION WAS WRITTEN FOR PUBLICATION The opinion in support of the decision being entered today is binding precedent of the Interference Trial Section of the Board of Patent Appeals and Interferences. The opinion is otherwise not binding precedent. The decision was entered on __________ Paper 29 Filed by: Trial Section Box Interference Washington, D.C. 20231 Tel: 703-308-9797 Fax: 703-305-0942 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ NANCY M. GRAY and RAYMOND L. WOOSLEY Junior Party, (Patent 5,474,997), v. JAN HEERES, JEAN L. MESENS and JOZEF PEETERS Senior Party (Application 08/676,531). _______________ Patent Interference No. 104,079 _______________ Before: McKELVEY, Senior Administrative Patent Judge, and SCHAFER, LEE and TORCZON, Administrative Patent Judges. PER CURIAM. JUDGMENT PURSUANT TO 37 CFR § 1.662 - 2 - Upon consideration of the GRAY ET AL. ABANDONMENT OF CONTEST UNDER 37 C.F.R. § 1.662(a) (Paper 28), it is ORDERED that judgment on priority as to Count 1, the sole count in the interference, is awarded against junior party NANCY M. GRAY and RAYMOND L. WOOSLEY. FURTHER ORDERED that judgment on priority as to Count 1 is awarded in favor of senior party JAN HEERES, JEAN L. MESENS and JOZEF PEETERS. FURTHER ORDERED that, on the record before the Board of Patent Appeals and Interferences, senior party JAN HEERES, JEAN L. MESENS and JOZEF PEETERS is entitled to a patent containing claims 13-25 (corresponding to Count 1) of application 08/676,531, filed July 9, 1996. FURTHER ORDERED that junior party NANCY M. GRAY and RAYMOND L. WOOSLEY is not entitled to a patent containing claims 1-15 (corresponding to Count 1) of U.S. Patent 5,474,997, granted December 12, 1995, based on 08/341,266, filed November 17, 1994. FURTHER ORDERED that notwithstanding the following sentence in the GRAY ET AL. ABANDONMENT OF CONTEST UNDER 37 C.F.R. § 1.662(a) (Paper 28): However, by abandoning the contest [due to a lack of commercial interest on the part of Sepracor, the real - 3 - party in interest] as to Count 1, the party Gray et al. does not concede the issue of priority of invention to the party Heeres et al. (1) the filing of the GRAY ET AL. ABANDONMENT OF CONTEST UNDER 37 C.F.R. § 1.662(a) (Paper 28) shall be treated as a request for entry of an adverse judgment (see 37 CFR § 1.662(a)) and (2) the judgment entered today is a judgment on the merits which as between the parties to the interference establishes that JAN HEERES, JEAN L. MESENS and JOZEF PEETERS "made" (35 U.S.C. § 102(g)) the invention defined by Count 1 prior to NANCY M. GRAY and RAYMOND L. WOOSLEY. FURTHER ORDERED that the preliminary statement filed by Heeres is returned unopened. FURTHER ORDERED that if there is a settlement agreement, attention is directed to 35 U.S.C. § 135(c) and 37 CFR § 1.661. ______________________________ FRED E. McKELVEY, Senior ) Administrative Patent Judge ) ) - 4 - ) ______________________________) RICHARD E. SCHAFER ) Administrative Patent Judge ) ) ) BOARD OF PATENT ______________________________) APPEALS AND JAMESON LEE ) INTERFERENCES Administrative Patent Judge ) ) ) ______________________________) RICHARD TORCZON ) Administrative Patent Judge ) - 5 - cc (via First Class Mail): Attorney for Gray (real party in interest Sepracor, Inc. and Georgetown University): Mark Boland, Esq. John T. Callahan, Esq. SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC 2100 Pennsylvania Avenue, N.W. Washington, D.C. 20037-3202 Tel: 202-293-7060 Fax: 202-293-7860 E-mail: mboland@sughrue.com jcallahan@sughrue.com Attorney for Heeres (real party in interest Jannsen Pharmaceutica, N.V.): Francis A. Paintin, Esq. Joseph Lucci, Esq. WOODCOCK, WASHBURN, KURTZ, MACKIEWICZ & NORRIS One Liberty Place -- 46th Floor Philadelphia, PA 19103 Tel: 215-568-3100 Fax: 215-568-3439 E-mail: None Copy with citationCopy as parenthetical citation