Whitehouse et al.v.CHERNUSHEVICH et al.

Patent Trial and Appeal Board

Dec 12, 2013

09316388 (P.T.A.B. Dec. 12, 2013)

Mail Stop Interference Paper No. 27
P.O. Box 1450 Entered: December 12, 2013
Alexandria, VA 22313-1450
BoxInterferences@uspto.gov
Tel: 571-272-4683
Fax: 571-273-0042

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

PERKIN ELMER HEALTH SCIENCES, INC.
Junior Party
US Application No. 09/901,428
(Inventors: Craig M. Whitehouse, Thomas Dresch, and
Bruce Andrien)

v.

DH TECHNOLOGIES DEVELOPMENT PTE LTD.
Senior Party
US 6,285,027
(Inventors: Igor Chernushevich and Bruce Thomson)
________________

Patent Interference 105,955 (HHB)
(Technology Center 2800)
________________

Before: RICHARD TORCZON, DEBORAH KATZ, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

Judgment – Request for Adverse
37 CFR § 41.127(b)
Interference No. 105,955

2

Pursuant to Rule 41.205(a) and 35 U.S.C. §135(c), Junior Party Perkin
Elmer submitted a settlement agreement reached between Junior Party Perkin
Elmer and Senior Party DH Technologies, and requested that the settlement
agreement be kept separate from the interference files. Paper 25.
Pursuant to the Board’s recommendation, via paralegal email on November
27, 2013, Junior Party Perkin Elmer also 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 3-4). Paper 26.
A conference call to review the status of the settlement negotiations and to
discuss the parties’ list of proposed motions was scheduled on November 27, 2013
at 2:00 p.m. EDT as per Paper No. 22. However, in view of the request for
adverse judgment as to Count 1, the conference call was no longer necessary and
was therefore canceled. Junior Party Perkin Elmer’s Request for Adverse
Judgment is GRANTED.
Accordingly, it is:
ORDERED that judgment on priority as to Count 1, the sole count of
the interference (Paper 1 at 3-4), is entered against Junior Party Perkin Elmer;
FURTHER ORDERED that claims 99 and 115 of Junior Party
Perkin Elmer Patent Application Serial Number 09/901,428, which correspond to
Count 1, the sole count of the interference (Paper 1 at 3-4), are FINALLY
REFUSED, former 35 U.S.C. §135(a); and
FURTHER ORDERED that a copy of this judgment shall be entered
into the administrative record of the involved Perkin Elmer Patent Application
Serial Number 09/901,428 and the involved DH Technologies patent, US Patent
No. 6,285,027.

Interference No. 105,955

3

cc:

Attorney for Junior Party – Perkin Elmer:

Chris C. Bowley, Ph.D.
Marc M. Wefers, Ph.D.
Ka-Lo Yeh, Ph.D.
FISH & RICHARDSON P.C.
601 Lexington Avenue, 52nd Floor
New York, NY 10022-4611
Telephone: (212) 641-2295
Fax: (212) 258-2291
Email: bowley@fr.com
Email: wefers@fr.com
Email: kyeh@fr.com

Attorney for Senior Party – DH Technologies:

Thomas J. Engellenner, Esq.
Reza Mollaaghababa, Esq.
Pepper Hamilton LLP
125 High Street
19th Floor, High Street Tower
Boston, MA 02110
(617) 204-5100 (telephone)
(617) 204-5150 (facsimile)
Email: engellennert@pepperlaw.com
Email: mollaaghababar@pepperlaw.com