Sawyers et al.v.Druker et al.

Patent Trial and Appeal Board

Nov 13, 2013

11873985 (P.T.A.B. Nov. 13, 2013)

BoxInterferences@uspto.gov Paper 67
Telephone: 571-272-4683 Entered: 13 November 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
____________________

Patent Interference 105,943 McK
Patent Interference 105,944 McK
Patent Interference 105,945 McK
Technology Center 1600
____________________

OREGON HEALTH AND SCIENCE UNIVERSITY,
Inventors: Brian J. Druker and Amie Corbin

Patent 7,326,534 B2,
Patent 7,416,873 B2,
Patent 7,592,142 B2,
Junior Party,

v.

REGENTS OF THE UNIVERSITY OF CALIFORNIA,
Inventors: Charles L. Sawyers, Mercedes E. Gorre,
Neil Pravin Shah and John Nicoll,

Application 12/080,596,
Senior Party.
___________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge, and
RICHARD E. SCHAFER and SALLY GARDNER LANE, Administrative
Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

2

JUDGMENT
I. Oregon abandonment of contest 1
Oregon has filed a document styled OREGON HEALTH AND SCIENCE 2
UNIVERSITY—ABANDONMENT OF CONTEST (Paper 66). 3
The document states: 4
Junior Party Oregon Health and Science University (“OHSU”) 5
hereby abandons the contest due to its business decision, which 6
considered the funds that would be necessary to continue the 7
interferences weighed against the potential revenue obtaining by 8
OHSU from the patents rights under dispute. OHSU continues to 9
believe that Druker et al. are the prior inventors for the reasons set 10
forth in the OHSU List of Proposed Motions [Paper 39], and would be 11
pleased to assist anyone who would like to challenge any patent 12
issued to California. 13
II. Judgment orders 14
Upon consideration of Oregon’s abandonment of the contest (Paper 66), the 15
following is ordered. 16
A. Interference 105,943 17
ORDERDED that judgment on priority as to Count 1 (the sole count 18
in Interference 105,943 (Corrected Declaration, Paper 1.001, page 8) is awarded 19
against Junior Party Oregon Health and Science University, Brian J. Druker and 20
Amie Corbin. 21
FURTHER ORDERED that Oregon Health and Science University, 22
Brian J. Druker and Amie Corbin are not entitled to a patent containing claims 1-2, 23
4-5 and 7-12 (corresponding to Count 1) of: 24
3

U.S. Patent 7,326,534 B2 1
issued 05 February 2008 2
based on application 11/524,626 3
filed 20 September 2006 4
5
FURTHER ORDERED that claims 1-2, 4-5 and 7-12 of 6
U.S.Patent 7,326,534 B2 are cancelled. 35 U.S.C. § 135(a). 7
FURTHER ORDERED that a copy of this JUDGMENT shall be 8
placed in the files of (1) Oregon U.S. Patent 7,326,534 B2 and (2) California 9
application 12/080,596. 10
FURTHER ORDERED that the Clerk is authorized to distribute the 11
files of Interference 105,943 upon entry of this JUDGMENT. 12
B. Interference 105,944 13
ORDERDED that judgment on priority as to Count 2 (the sole count 14
in Interference 105,944 (Corrected Declaration, Paper 1.001, page 8) is awarded 15
against Junior Party Oregon Health and Science University, Brian J. Druker and 16
Amie Corbin. 17
FURTHER ORDERED that Oregon Health and Science University 18
and Brian J. Druker and Amie Corbin not entitled to a patent containing claims 1-3 19
and 6-10 (corresponding to Count 2) of: 20
U.S. Patent 7,416,873 B2 21
issued 26 August 2008 22
based on application 11/873,985 23
filed 17 October 2007 24
25
FURTHER ORDERED that claims 1-3 and 6-10 of 26
U.S. Patent 7,416,873 B2 are cancelled. 35 U.S.C. § 135(a). 27
4

FURTHER ORDERED that a copy of this JUDGMENT shall be 1
placed in the files of (1) Oregon U.S. Patent 7,416,873 B2 and (2) California 2
application 12/080,596. 3
FURTHER ORDERED that the Clerk is authorized to distribute the 4
files of Interference 105,944 upon entry of this JUDGMENT. 5
C. Interference 105,945 6
ORDERDED that judgment on priority as to Count 3 (the sole count 7
in Interference 105,945 (Corrected Declaration, Paper 1.001, page 8) is awarded 8
against Junior Party Oregon Health and Science University, Brian J. Druker and 9
Amie Corbin. 10
FURTHER ORDERED that Junior Party Oregon Health and Science 11
University and Brian J. Druker and Amie Corbin are not entitled to a patent 12
containing claims 1-3, 6-13, 16-19 and 21-25 (corresponding to Count 3) of: 13
U.S. Patent 7,592,142 B2 14
issued 22 September 2009 15
based on application 12/178,926 16
filed 24 July 2008 17
18
FURTHER ORDERED that claims 1-3, 6-13, 16-19 and 21-25 of 19
U.S. Patent 7,592,142 B2 are cancelled. 35 U.S.C. § 135(a). 20
FURTHER ORDERED that a copy of this JUDGMENT shall be 21
placed in the files of (1) Oregon U.S. Patent 7,592,142 B2 and (2) California 22
application 12/080,596. 23
FURTHER ORDERED that the Clerk is authorized to distribute the 24
files of Interference 105,945 upon entry of this JUDGMENT. 25
5

III. Miscellaneous orders 1
FURTHER ORDERED that a copy of this JUDGMENT shall be 2
placed in the files of (1) Interference 105,943, (2) Interference 105,944, and 3
(3) Interference 105,945. 4
FURTHER ORDERED that a copy of Oregon Motions List 5
(Paper 39) be made of record in California application 12/080,596 for such 6
consideration as the Examiner may deem appropriate. 7
FURTHER ORDERED that if there is a settlement agreement in 8
(1) Interference 105,943, (2) Interference 105,944, and/or (3) Interference 105,945, 9
attention is directed to 35 U.S.C. § 135(c). 10

6

By Electronic Transmission: 1
Attorney for Oregon Health and Science University: 2
R. Danny Huntington 3
Sharon E. Crane 4
Rothwell, Figg, Ernst & Manbeck, PC 5
dhuntington@rfem.com 6
scrane@rfem.com 7
8
Attorney for Regents of the University of California: 9
James F. Haley, Jr. 10
Qianru Li 11
Ropes & Gray, LLP 12
james.haley@ropesgray.com 13
qianru.li@ropesgray.com 14
15
16