ROHRv.MCNULTY et al

Board of Patent Appeals and Interferences

Jun 2, 2003

09328080 (B.P.A.I. Jun. 2, 2003)

1 Accorded benefit for priority of the filing date of its application,
09/361,210, July 29, 1999. According to Rohr, the real party in interest is
Zimmer Technologies, Inc.
2 Accorded benefit for priority of application 60/088,729, filed June
10, 1998. According to McNulty, the real party in interest is DuPuy
Orthopaedics, Inc.
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 45
Filed by: Interference Trial Section Merits Panel
Box Interference Filed
Washington, D.C. 20231 2 June 2003
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
WILLIAM ROHR,
Junior Party,
(Patent 6,143,232)1,
v.
DONALD E. McNULTY and TODD SMITH,
Senior Party
(Application 09/328,080)2.
_______________
Patent Interference 104,804 (Nagumo)
_______________
Before: SCHAFER, TORCZON, and NAGUMO, Administrative Patent
Judges.
NAGUMO, Administrative Patent Judge.
FINAL JUDGMENT
(PURSUANT TO 37 CFR § 1.662(a))
Interference No. 104,804 Paper 45
Rohr v. McNulty
2
On May 30, 2003, junior party Rohr filed a notice that it
would not take priority testimony in this case. (Paper 44 at 2.)
Rohr also "proposes that the Board enter judgment on priority be
entered in favor of McNulty and enter judgment confirming the
Board's decision on the preliminary motions (Paper No. 36), as
adhered to on reconsideration." (Id.)
Rohr's decision not to take priority testimony and its
"proposal" are accepted as a concession of priority in this
interference. "When the Board enters a decision awarding
judgment as to all counts, the decision shall be regarded as a
final decision for the purpose of judicial review (35 U.S.C.
141–144, 146)." 37 CFR § 1.658(a). Thus, the decision on
preliminary motions is incorporated in this Final Judgment.
ORDER
In consideration of the foregoing facts, it is:
ORDERED that judgment on priority as to Count 1 is awarded
against junior party Rohr;
FURTHER ORDERED that William Rohr is not entitled to a
patent containing claims 1–12 of Rohr's 6,143,232 patent, which
correspond to Count 1;
FURTHER ORDERED that any request for reconsideration be
filed within one month from the date of this judgment; and
Interference No. 104,804 Paper 45
Rohr v. McNulty
3
FURTHER ORDERED that a copy of this decision be entered in
the administrative record of Rohr's 6,143,232 patent and of
McNulty's 09/328,080 application.
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
) BOARD OF PATENT
______________________________) APPEALS AND
RICHARD TORCZON ) INTERFERENCES
Administrative Patent Judge )
)
) INTERFERENCE
______________________________) TRIAL SECTION
MARK NAGUMO )
Administrative Patent Judge )
)
104,804
cc (via facsimile and First Class Mail):
Attorney for Rohr
(real party in interest
Zimmer, Inc.):
John F. Hoffman, Esq.
Todd A. Dawson, Esq.
BAKER & DANIELS
111 East Wayne Street, Suite 800
Fort Wayne, IN 46802
Tel: 260-460-1692
Fax: 260-460-1700
E-mail: jfhoffma@bakerd.com
Attorney for McNulty
(real party in interest
DePuy Orthopaedics, Inc.):
Barry E. Bretschneider, Esq.
Peter J. Davis, Esq.
MORRISON & FOERSTER LLP
1650 Tysons Blvd.
Suite 300
McLean, VA 2212
Tel: 703-760-7743 (BEB)
Tel: 703-760-7748 (PJD)
Fax: 703-760-7777
E-mail: bbretschneider@mofo.com
E-mail: pdavis@mofo.com