Jacobsonv.Poore et al.

Patent Trial and Appeal Board

Sep 15, 2015

11440723 (P.T.A.B. Sep. 15, 2015)

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: September 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Nanostim, Inc.
Junior Party
(Application No. 12/953,282)
(Inventor: Peter M. Jacobson)

v.

Pacesetter, Inc.
Senior Party
(US 7,630,767)
(Inventors: John W. Poore, Gene A. Bornzin, and Eric Falkenberg)
________________

Patent Interference 106,031 (HHB)
(Technology Center 3700)
________________

Before FRED E. McKELVEY, DEBORAH KATZ, and
HUNG H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

JUDGMENT – 37 C.F.R. §41.127(a)
Senior Party Pacesetter filed a Request for Adverse Judgment under 37
C.F.R. §41.127(b)(1) as to Count 1, the sole count of the interference (Paper 1 at
4–7). Paper 10. The Request for Adverse Judgment is GRANTED.
Interference No. 106,031

2

Accordingly, it is:
ORDERED that judgment on priority as to Count 1, the sole count of
the interference (Paper 1 at 4–5) be entered against Senior Party Pacesetter;
FURTHER ORDERED that Claims 1–18 of Senior Party Pacesetter’s
involved patent, US Patent No. 7,630,767, which correspond to Count 1 of the
interference (Paper 1 at 4–5), are CANCELLED, 35 U.S.C. §135(a);
1

FURTHER ORDERED that a copy of this judgment shall be entered
into the administrative record of (1) Junior Party Nanostim’s involved application,
US Application No. 12/953,282 and (2) Senior Party Pacesetter’s involved patent,
US Patent No. 7,630,767;
FURTHER ORDERED that if there is any settlement agreement or
related documents which have not been filed, attention is directed to 35 U.S.C.
§135(c) and 37 C.F.R. §41.205;
FURTHER ORDERED that a party seeking judicial review timely
serve notice on the Director of the United States Patent and Trademark Office
(37 C.F.R. §§ 90.1 and 104.2); and
FURTHER ORDERED that attention is directed to Biogen Idec MA,
Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57 (Fed.
Cir. 2015).

1 “Patent interferences continue under the relevant statutes in effect on 15 March
2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).”
Interference No. 106,031

3

Cc (via email delivery):

Attorney for Junior Party – Nanostim

Theresa A. Raymer, Esq.
Steven M. Mitchell, Esq.
St. Jude Medical
645 Almanor Ave
Sunnyvale, CA 94085
Email: traymer@sjm.com
smitchell@sjm.com

Attorney for Senior Party – Pacesetter

Theresa A. Raymer, Esq.
Steven M. Mitchell, Esq.
St. Jude Medical
645 Almanor Ave
Sunnyvale, CA 94085
Email: traymer@sjm.com
smitchell@sjm.com