Clark et al.v.Murphy et al. V. Clark et al. V. Murphy et al.

Patent Trial and Appeal BoardDec 5, 2012

11875537 (P.T.A.B. Dec. 5, 2012)

-1- Paper 13 Mail Stop Interference P.O. Box 1450 Filed: 5 December 2012 Alexandria Va 22313-1450 Tel: 571-272-4683 Fax: 571-273-0042 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD KENNETH M. MURPHY, NORIHIKO WATANABE, THERESA MURPHY, and JIANFEI YANG and XINGXING ZANG Junior Party (Application Nos.11/875,537 and 13/438,628). v. HILLARY CLARK, DANIEL L. EATON, AUSTIN L. GURNEY, and BERND WRANIK Senior Party (Patents 7,153,950 and 7,605,229), Patent Interference No. 105,904 (DK) (Technology Center 1600) JUDGMENT 1 Bd.R. 127(b)(4) 2 Abandonment of Contest 3 4 Before: Sally Gardner Lane, Deborah Katz, and Jacqueline Wright Bonilla, 5 Administrative Patent Judges. 6 -2- Katz, Administrative Patent Judge. 1 Junior Party Murphy has indicated that it will not participate in this Interference in 2 the attached e-mail correspondence with the Board. Such an abandonment of the 3 contest is construed to be a request for adverse judgment. Bd. R. 127(b)(4). 4 Accordingly, it is ORDERED that 5 Judgment on priority as to Counts 1 and 2 (Declaration (Paper 1 at 4-5), the only 6 counts of the interference, is ENTERED AGAINST Junior Party Murphy; 7 Claims 99-108, 116, and 134-137 of Murphy application 11/875,537 and claims 8 1-4 of Murphy application 13/438,628, which claims correspond to one of the two 9 Counts, are FINALLY REFUSED; and 10 A copy of this judgment is ENTERED into the administrative records of the 11 involved patents and applications. 12 13 Enc: 14 Copy of e-mail dated 28 November 2012 15 16 17 18 cc (via overnight delivery): 19 20 Attorney for Murphy: 21 22 Polsinelli Shughart PC 23 100 South Fourth Street 24 Suite 1000 25 Saint Louis, Mo 63102-1825 26 27 Attorney for Clark: 28 29 Genentech, Inc. 30 1 DNA Way 31 South San Francisco, CA 94080 32 1 Banks, Lawrence J. From: Rebecca Riley-Vargas Sent: Wednesday, November 28, 2012 2:58 PM To: Banks, Lawrence J. Cc: Teddy Scott, Jr. Subject: RE: Interference No. 105,904 Lawrence, Thank you for the below notice. We have been instructed by our client to not respond to this interference. Please let me know if there is anything we need to do proactively to not respond. Sincerely, Rebecca From: Banks, Lawrence J. [Lawrence.Banks@USPTO.GOV] On Behalf Of Interference Trial Section [InterferenceTrialSection@USPTO.GOV] Sent: Wednesday, November 28, 2012 8:53 AM To: US Patent and Trademark Subject: Interference No. 105,904 Counsel, An interference was declared on November 14, 2012 involving applications 11/875,537 and 13/438,628. Initial papers have not yet been received and are due by close of business today. The initial papers are: Notice of Lead and Backup Counsel Real Party in Interest Notice of Related Proceedings Clean Copy of Claims Request for File Copies Please file the Notice of Lead and Backup Counsel via email at BoxInterferences @uspto.gov. Please wait until you receive a username and password which will allow you to file the remaining papers via the web portal. Please notify me immediately if you do not intend to file a Request for File Copies so the other side may receive their file copies as soon as possible. If you did not receive a copy of the declaration of interference, or have any question, contact the Board at 571‐272‐4683 Sincerely, Lawrence J. Banks Paralegal Specialist Patent Trial and Appeal Board USPTO 571-272-4683 2 This electronic mail message contains CONFIDENTIAL information which is (a) ATTORNEY - CLIENT PRIVILEGED COMMUNICATION, WORK PRODUCT, PROPRIETARY IN NATURE, OR OTHERWISE PROTECTED BY LAW FROM DISCLOSURE, and (b) intended only for the use of the Addressee(s) named herein. If you are not an Addressee, or the person responsible for delivering this to an Addressee, you are hereby notified that reading, copying, or distributing this message is prohibited. If you have received this electronic mail message in error, please reply to the sender and take the steps necessary to delete the message completely from your computer system. -------------------------------------------------------------------------------- IRS CIRCULAR 230 DISCLOSURE: Unless expressly stated otherwise, any U.S. federal tax advice contained in this e-mail, including attachments, is not intended or written by Polsinelli Shughart PC (in California, Polsinelli Shughart LLP) to be used, and any such tax advice cannot be used, for the purpose of avoiding penalties that may be imposed by the Internal Revenue Service.

Clark et al. V. Murphy et al. V. Clark et al. V. Murphy et al.