CARUS CORPORATION

Patent Trials and Appeals Board

Feb 17, 2022

106119 (P.T.A.B. Feb. 17, 2022)

BoxInterferences@uspto.gov Filed: February 17, 2022 Tel: 571-272-9797 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PAMELA J. DUGAN, SEAN DAVENPORT, AND MOHAMADKHEIR ALKHATEEB, JUNIOR PARTY (PATENT 10,183,316) V. LINDSAY SWEARINGEN, AND JASON SWEARINGEN, SENIOR PARTY (APPLICATION 16/252,938). PATENT INTERFERENCE NO. 106,119 (TECHNOLOGY CENTER 1700) Before SALLY GARDNER LANE, JAMES T. MOORE and DEBORAH KATZ, Administrative Patent Judges. LANE, Administrative Patent Judge. Judgment- Request for Adverse - Bd. R. 127(b) Interference 106,119 -2- Discussion 1 Counsel for junior party Pamela J. Dugan, Sean Davenport, and 2 Mohamadkheir Alkhateeb (Dugan) contacted the Board to convey that junior party 3 will not be filing any motions during the priority phase of the interference. (See 4 attached email communication). Junior party Dugan cannot prevail in the 5 interference absent a showing of priority. Bd. R. 207(a) (parties are presumed to 6 have invented the interfering subject matter in the order of the dates of their 7 accorded benefit).1 8 We consider Dugan’s acknowledgment that it will not file a priority motion 9 to be a request for adverse judgment as to Counts 1 and 2, the only counts of the 10 interference. Bd. R. 127(b)(3)-(4). 11 12 Order 13 It is 14 ORDERED that judgment on priority as to Counts 1 and 2, the only counts 15 of the interference, is entered against junior party Dugan; 16 FURTHER ORDERED that claims 1-8 of junior party involved patent 17 10,183,316, which correspond to Count 1, and claims 9-13 of junior party involved 18 1 Dugan’s motion for a judgment of no interference-in-fact as well as Dugan’s motions attacking senior party’s accorded benefit and the patentability of senior party’s involved claims for lack of written description, enablement, and definiteness were denied during the non-priority phase of the interference. (First Decision, Paper 37, 13; Second Decision, Paper 103, 24). Dugan did not seek authorization, and was not authorized, to file any other motion during the priority phase that might result in judgment adverse to senior party. (Order Authorizing Motions, Paper 18). Interference 106,119 -3- patent 10,183,316, which correspond to Count 2 (Paper 1, Declaration, 4), are 1 CANCELLED; 35 U.S.C. § 135(a);2 and 2 FURTHER ORDERED that a copy of this judgment be entered into the 3 administrative records of involved patent 10,183,316 and involved application 4 16/252,938. 5 cc (via electronic): Attorney for Dugan: Adam J. Fromm David J. Marr David Gorski CLARK HILL PLC afromm@clarkhill.com dmarr@clarkhill.com dgorski@clarkhill.com Attorney for Swearingen: Steve Witters WITTERS & ASSOCIATES witters@patentlydistinct.com 2 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). Interference 106,119 -4- Mark K. Suri HINSHAW & CULBERTSON LLP msuri@hinnshawlaw.com 1 Subject: FW: 106,119-email attachment for judgment From: Fromm, Adam J. Sent: Wednesday, February 9, 2022 2:02 PM To: Interference Trial Section Cc: switters@patentlydistinct.com; Gorski, David ; Kattula, Amy ; Kellogg, Andrew ; BOX INTERFERENCES ; msuri@hinnshawlaw.com Subject: Interference 106119: Request for Conference Call CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments. Dear Board: This is a request by Junior Party for a conference call with the parties and the Board. At page 3, lines 11-13 of the Order dated November 29, 2021 (Dkt. No. 104), it is stated that “[i]f the junior party does not file a priority motion, the JUNIOR PARTY must arrange a conference call with the parties and the Board so that appropriate action may be taken.” Junior Party will not be filing any motions in the priority phase. Thus, this is Junior Party’s correspondence with the parties and the Board in accordance with the Order. Best regards, Adam Adam J. Fromm Member, Attorney at Law Clark Hill 130 E. Randolph Street, Suite 3900, Chicago, IL 60601 +1.312.985.5908 (office) | +1.312.919.9717 (cell) | +1.312.985.5578 (fax) afromm@clarkhill.com| www.clarkhill.com