13708087 (P.T.A.B. Sep. 7, 2016)

Rienhoffv.Bergeron

Patent Trial and Appeal BoardSep 7, 2016

13708087 (P.T.A.B. Sep. 7, 2016)

-1- BoxInterferences@uspto.gov Filed: 7 September 2016 Tel: 571-272-7822 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD HUGH Y. RIENHOFF JR., Junior Party (Patent 8,993,606), v. RAYMOND J. BERGERON JR., Senior Party (Applications 14/875,462). Patent Interference No. 106,055 (Technology Center 1600) Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ, Administrative Patent Judges. LANE, Administrative Patent Judge. JUDGMENT - Bd. R. 127(a) -2- Rienhoff contacted the Board stating that it has decided no longer to contest 1 the interference. (See attached email communication). We consider Rienhoff’s 2 statement to be a request for adverse judgment under Bd. R. 127(b) (4). 3 It is 4 ORDERED that judgment on priority is entered against junior party 5 Rienhoff as to Count 1, the sole Count of the interference (Declaration, Paper 1, at 6 4); 7 FURTHER ORDERED that claims 1 and 3-9 of Rienhoff patent 8,993,606, 8 which correspond to Count 1, are CANCELLED. 35 U.S.C. § 135(a);1 9 FURTHER ORDERED that the parties are directed to 35 USC § 135(c) and 10 Bd. R. 205 regarding the filing of settlement agreements; and 11 FURTHER ORDERED that a copy of this judgment be entered into the 12 administrative records of the involved Rienhoff patent and Bergeron application. 13 1 Any reference to a statute in this Judgment is to the statute that was in effect on March 15, 2013 unless otherwise indicated. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011). -3- cc (via electronic): Attorney for Rienhoff: Charles E. Lyon, DPhil John P. Rearick, Ph.D. clyon@choate.com jrearick@choate.com Attorney for Bergeron: Michael T. Siekman Laura Vogel C. Hunter Baker, M.D., Ph.D. Wei Zhang, Ph.D. Msiekman-ptab@wolfgreenfield.com Lvogel-ptab@wolfgreenfield.com Hbaker-ptab@wolfgreenfield.com Wzhang-ptab@wolfgreenfield.com 1 FW: email attachment for 106,055 judgment From: Lyon, Charles [mailto:clyon@choate.com] Sent: Tuesday, August 30, 2016 9:50 AM To: BOX INTERFERENCES Cc: MSiekman‐PTAB@WolfGreenfield.com; HBaker‐PTAB@WolfGreenfield.com; Rearick, John P. ; Lyon, Charles Subject: RE: Pat. Int. No. 106.055 (SGL); Request to Schedule Conference Call Dear Sir, Rienhoff has decided to no longer contest this interference and the purpose of the call was to alert the APJ of this decision in advance of the September 7 deadline. Counsel for Rienhoff assumes that the next step would involve Rienhoff filing a Request for Adverse Judgment. If Counsel for Bergeron does not object or have other matters to discuss then a conference call with the APJ may not be necessary. Respectfully Submitted, Charles E. Lyon Counsel for Rienhoff Charles E. Lyon, DPhil, JD Partner Co‐Chair, Intellectual Property Choate, Hall & Stewart LLP Two International Place 100‐150 Oliver Street Boston, MA 02110 t 617‐248‐4793 f 617‐502‐5002 clyon@choate.com www.choate.com From: BOX INTERFERENCES [mailto:BoxInterferences@USPTO.GOV] Sent: Tuesday, August 30, 2016 8:51 AM To: Lyon, Charles; BOX INTERFERENCES Cc: MSiekman-PTAB@WolfGreenfield.com; HBaker-PTAB@WolfGreenfield.com; Rearick, John P. Subject: RE: Pat. Int. No. 106.055 (SGL); Request to Schedule Conference Call Counsel, Can each side please provide a brief description of what they would like to discuss? Thanks, Andrew Kellogg, Supervisory Paralegal Patent Trial and Appeal Board USPTO 2 andrew.kellogg@uspto.gov Direct: 571-272-5366 From: Lyon, Charles [mailto:clyon@choate.com] Sent: Monday, August 29, 2016 7:10 PM To: BOX INTERFERENCES Cc: MSiekman‐PTAB@WolfGreenfield.com; HBaker‐PTAB@WolfGreenfield.com; Lyon, Charles ; Rearick, John P. Subject: Pat. Int. No. 106.055 (SGL); Request to Schedule Conference Call Dear Sir/Madam: A Joint Motion for No‐Interference‐In‐Fact is due September 7. [See Paper No. 17 at p. 8.] Rienhoff wishes to provide the APJ with an update regarding this matter, and requests a conference call with the APJ and the parties this week or on September 6 at a time that would be convenient to the APJ. Respectfully Submitted, Charles E. Lyon Counsel for Rienhoff Charles E. Lyon, DPhil, JD Partner Co‐Chair, Intellectual Property Choate, Hall & Stewart LLP Two International Place 100‐150 Oliver Street Boston, MA 02110 t 617‐248‐4793 f 617‐502‐5002 clyon@choate.com www.choate.com Choate Hall & Stewart LLP Confidentiality Notice: This message is transmitted to you by or on behalf of the law firm of Choate, Hall & Stewart LLP. It is intended exclusively for the individual or entity to which it is addressed. The substance of this message, along with any attachments, may contain information that is proprietary, confidential and/or legally privileged or otherwise legally exempt from disclosure. If you are not the designated recipient of this message, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please destroy and/or delete all copies of it and notify the sender of the error by return e‐mail or by calling 1‐800‐520‐2427. For more information about Choate, Hall & Stewart LLP, please visit us at choate.com Choate Hall & Stewart LLP Confidentiality Notice: This message is transmitted to you by or on behalf of the law firm of Choate, Hall & Stewart LLP. It is intended exclusively for the individual or entity to which it is addressed. The substance of this message, along with any attachments, may contain information that is proprietary, confidential and/or legally privileged or otherwise legally exempt from disclosure. If you are not the designated recipient of this message, you are not authorized to read, print, 3 retain, copy or disseminate this message or any part of it. If you have received this message in error, please destroy and/or delete all copies of it and notify the sender of the error by return e‐mail or by calling 1‐800‐520‐2427. For more information about Choate, Hall & Stewart LLP, please visit us at choate.com

Rienhoff V. Bergeron