Mail Stop Interference
`P.O. Box 1450
`Alexandria Va 22313-1450
`Tel: 571-272-4683
`Fax: 571-273-0042
`
`Filed: May 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ANDREA PAS TO RIO
`and PAOLO BETTI
`Junior Party,
`(Patent 8,304,559)
`
`v.
`
`ANAILEVIN
`and MICHAEL GRABARNICK,
`
`Senior Party,
`(Application 13/926,389)
`
`Patent Interference No. 105,995
`(Technology Center 1600)
`
`ORDER
`Motion Times
`Bd.R. 1 04( c)
`
`1
`2
`
`3
`
`A.BACKGROUND
`Pastorio was authorized to file a Motion for judgment based on no
`
`interference in fact on an expedited basis. (Order Motions Times, Paper 24). On
`
`FINCHIMICA EXHIBIT 2004
`ADAMA MAKHTESHIM v. FINCH/MICA
`CASE IPR2016-00577
`
`
`P.O. Box 1450
`Alexandria Va 22313-1450
`Tel: 571-272-4683
`Fax: 571-273-0042
`
`Filed: May 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ANDREA PAS TO RIO
`and PAOLO BETTI
`Junior Party,
`(Patent 8,304,559)
`
`v.
`
`ANAILEVIN
`and MICHAEL GRABARNICK,
`
`Senior Party,
`(Application 13/926,389)
`
`Patent Interference No. 105,995
`(Technology Center 1600)
`
`ORDER
`Motion Times
`Bd.R. 1 04( c)
`
`1
`2
`
`3
`
`A.BACKGROUND
`Pastorio was authorized to file a Motion for judgment based on no
`
`interference in fact on an expedited basis. (Order Motions Times, Paper 24). On
`
`FINCHIMICA EXHIBIT 2004
`ADAMA MAKHTESHIM v. FINCH/MICA
`CASE IPR2016-00577
`
`
`
`1
`
`23 May 2014 Pastorio filed such a motion (Pastorio Motion 1, Paper 25) along
`
`2
`
`with a Statutory Disclaimer under 37 CFR 1.321(a) disclaiming claims 13-15 of
`
`3
`
`the involved Pastorio patent. (Disclaimer, Paper 26). In its Motion, Pastorio
`
`4
`
`contends that there is no interference in fact between its claims that remain after
`
`5
`
`the Disclaimer, i.e., claims 1-12, and the Levin claims. In particular, Pastorio
`
`6
`
`contends that its remaining claims do not require a “strong acid” while the Levin
`
`7
`
`claims do require such an acid. Pastorio argues that its remaining claims and
`
`8
`
`the Levin claims are not directed to interfering subject matter as defined at
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`9
`
`Bd. R. 203(a).
`
`10
`
`On 28 May 2014 and as authorized by the Board (Order Motions Times
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`11
`
`(Paper 24) at 4), Levin contacted the Board seeking “ authorization to file a
`
`12
`
`responsive motion to add a claim which corresponds to the subject matter of
`
`13
`
`Pastorio remaining claims 1-12 more directly than Levin's current claims 1-10.”
`
`14
`
`Levin indicated that it would wish to file such a motion “as contingent upon the
`
`15
`
`Board granting Pastorio Motion 1.” Levin also requested to file an opposition to
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`16
`
`Pastorio Motion 1 “if the Board finds that Pastorio Motion 1 presents a facially
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`17
`
`sufficient case of no interference-in-fact.” (See attached email communication).
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`18
`
`If Levin properly can add a claim that interferes in fact with the Pastorio
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`19
`
`remaining claims, then a judgment of no interference in fact would not be
`
`
`
`2
`
`
`
`1
`
`appropriate even if Pastorio is able to show that its remaining claims would not
`
`2
`
`have rendered obvious the current Levin claims. Given Levin’s position, it would
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`3
`
`be best to consider the issues presented along with any other of authorized motions
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`4
`
`the parties decide to file.
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`5
`
`6
`
`Authorized Motions
`
`In interferences substantive motions must raise a threshold issue, seek to
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`7
`
`change the scope of the definition of the interfering subject matter (i.e., change the
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`8
`
`Count(s) or claim correspondence), seek to change accorded benefit or seek
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`9
`
`judgment on derivation or priority. Bd. R. 208(a). Responsive motions may be
`
`10
`
`authorized if the relief requested would cure a defect raised in a substantive
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`11
`
`motion. Bd. R. 121(a)(2).
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`12
`
`Each party filed a Motions List (Pastorio List, Paper 23 and Levin List,
`
`13
`
`Paper 21) that was discussed during the call of 13 May 2014. Based on the
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`14
`
`discussion and the lists, as well as the parameters for permissible motions, the
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`15
`
`parties are authorized to file the following motions:
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`16
`
`17
`
`Pastorio requests to file a motion to modify the Count to add Pastorio Claim 1
`
`Pastorio
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`18
`
`as an alternative of the Count (Item 2 on the Pastorio List) and, if the Count is so
`
`19
`
`modified, to seek additional priority benefit for the modified Count. Pastorio is
`
`
`
`3
`
`
`
`1
`
`authorized to file such a motion to modify the Count. Pastorio should not file a
`
`2
`
`separate motion regarding benefit but instead should address benefit within the
`
`3
`
`motion seeking to modify the Count.
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`4
`
`The proposed motion to designate all the remaining Pastorio claims as not
`
`5
`
`corresponding to the Count (Item 1 on the Pastorio List) is not authorized as it is
`
`6
`
`essentially the same motion as the already filed Pastorio Motion 1.
`
`7
`
`Levin
`
`8
`
`
`
`Levin lists two proposed motions, at items 1 and 7 of its List, that seek
`
`9
`
`judgment on the basis that all the claims of Pastorio are unpatentable under
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`10
`
`35 USC §112, ¶2. Levin is authorized to file a single motion for judgment
`
`11
`
`addressing both of the 112,¶2 issues raised in items 1 and 7.
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`12
`
`The motions for judgment based on unpatentability of all of the Pastorio
`
`13
`
`claims under 35 USC 103(a), i.e., those at items 4-6, are not authorized at this time.
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`14
`
`Levin may renew its request to file the motions if and when the interference
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`15
`
`proceeds to a priority determination.
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`16
`
`
`
`The remaining proposed motions are not authorized as they would not result
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`17
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`in a judgment in the interference and do not otherwise fall within the types of
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`18
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`motions that might be authorized in interferences. Bd. R. 208(a).
`
`19
`
`
`
`
`
`4
`
`
`
`1
`
`2
`
`Levin Responsive Motion
`
`Levin is authorized to file a motion in response to Pastorio Motion 1. In the
`
`3
`
`Motion Levin may submit one proposed claim. Levin is directed to the Standing
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`4
`
`Order (Paper 2) at ¶ 208.5.1 regarding additional requirements for this type of
`
`5
`
`motion. Pastorio also should explain why the proposed added claim is not barred
`
`6
`
`under 35 USC 135(b) given that more one year has passed since issuance of the
`
`7
`
`Pastorio patent.
`
`8
`
`9
`
`Priority Motions
`
`Each party is authorized to file a motion for judgment based on priority but
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`10
`
`the filing of the motion is deferred to any priority phase of the interference.
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`11
`
`
`
`12
`
`13
`
`B. TIME PERIODS ASSOCIATED WITH MOTIONS
`
`In accordance with discussion during the telephone conference call, the
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`14
`
`TIME PERIODS described below are set out in an Appendix to this ORDER.
`
`15
`
`Action specified for each TIME PERIOD must be completed by the date specified
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`16
`
`for the TIME PERIOD.
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`17
`
`The parties are authorized to stipulate different times (earlier or later, but not
`
`18
`
`later than TIME PERIOD 7) for TIME PERIODS 1 through 6. A notice of the
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`19
`
`stipulation must be promptly filed. The notice must be in the form of a copy of the
`
`
`
`5
`
`
`
`1
`
`Appendix attached to this ORDER with old dates crossed out and new dates
`
`2
`
`inserted by hand. The parties may not stipulate an extension of TIME PERIOD 7
`
`3
`
`or the default date for oral argument. In stipulating different times, the parties
`
`4
`
`should consider the effect of the stipulation on times:
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`(1)
`
`(2)
`
`(3)
`
`to object to evidence (5 business days, Bd.R. 155(b)(1)),
`
`to supplement evidence (10 business days, Bd.R. 155(b)(2)),
`
`to begin cross examination (no earlier than 21 days after service,
`
`SO ¶ 157.3.1) and
`
`(4)
`
`to conclude cross examination (at least 10 days before the opposition
`
`or reply is due, SO ¶ 157.3.2).
`
`1. TIME PERIOD 1
`
`12
`
`
`
`File all authorized motions.
`
`1
`
`If no party files a motion, the SENIOR PARTY must arrange a conference
`
`2
`
`call with the parties and the Board so that appropriate adjustments to the schedule
`
`3
`
`may be made.
`
`4
`
`5
`
`6
`
`7
`
`8
`
`2. TIME PERIOD 2
`
`
`
`File any responsive motions (Bd.R. 121(a)(2)) in response to an opponent's
`
`motion filed during TIME PERIOD 1.
`
`3. TIME PERIOD 3
`
`File oppositions to all motions, including responsive motions.
`
`6
`
`
`
`
`
`
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`9
`
`4. TIME PERIOD 4
`
`10
`
`
`
`File replies to all oppositions.
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`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
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`18
`
`1
`
`2
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`3
`
`4
`
`5
`
`6
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`7
`
`8
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`9
`
`10
`
`11
`
`12
`
`5. TIME PERIOD 5
`
`a. File any request for oral argument on motions,
`
`b. File motions to exclude evidence (Bd.R. 155(c); SO & 155.2), and
`
`c. File observations on cross examination (SO & 157.7) of reply
`
`testimony.
`
`6. TIME PERIOD 6
`
`a. File oppositions to an opponent's motion to exclude evidence and
`
`b. File any response to observations.
`
`7. TIME PERIOD 7
`
`File replies to oppositions to motions to exclude evidence.
`
`C. PRIORITY STATEMENTS
`
`1. At TIME PERIOD 1, file but do not serve a priority statement
`
`(Bd.R. 120; Bd.R. 204(a)).
`
`2. When filing the priority statement, the filer may use the
`
`"Confidential" setting for the Public Access status.
`
`3. A junior party who does not file a priority statement shall not have
`
`access to the priority statement of any other party.
`
`4. One (1) business day after TIME PERIOD 1, serve a copy of the
`
`priority statement upon each opponent (except for a junior party
`
`barred under C.3 above).
`
`7
`
`
`
`
`
`13
`
`14
`
`D. FILING EXHIBITS
`
`
`
`A document larger than 50MB cannot be filed online. If a party needs to file
`
`15
`
`a document larger than 50MB, unless otherwise instructed by order, please contact
`
`16
`
`the board at the telephone number above to make other arrangements, such as
`
`17
`
`sending a CD-ROM by Express Mail.
`
`18
`
`19
`
`E. DEFAULT ORAL ARGUMENT DATE
`
`If a request for oral argument (Bd.R. 124(a); TIME PERIOD 5) is granted,
`
`20
`
`the default date for such argument is the date provided in the appendix below.
`
`21
`
`No oral argument will occur if either no argument is requested or granted.
`
`22
`
`23
`
`
`
`
`
`
`
`8
`
`
`
`cc (via electronic mail):
`
`
`Attorney for Pastorio:
`
`E. Anthony Figg
`R. Danny Huntington
`Rothwell, Figg, Ernst & Manbeck, P.C.
`efigg@rfem.com
`dhuntington@rfem.com
`
`
`
`
`Attorney for Levin:
`
`Gary J. Gershik
`Norman H. Zivin
`Cooper & Dunham
`ggershik@cooperdunham.com
`nzivin@cooperdunham.com
`
`
`
`Revised 27 November 2013
`
`
`
`
`
`9
`
`
`
`
`APPENDIX--ORDER - RULE 123(a)
` (Times for substantive motions; priority deferred)
`Interference 105,995
`
`
`
`
`
`TIME PERIOD 1 ......................................................................................................... 18 July 2014
`
`File motions (not already filed)
`
`File (but serve one business day later) priority statements
`
`
`
`TIME PERIOD 2 ......................................................................................................... 25 July 2014
`
`File responsive motions
`
`filed in TIME PERIOD 1
`
`
`
`TIME PERIOD 3 .............................................................................................. 19 September 2014
`
`File oppositions to all motions
`
`
`
`TIME PERIOD 4 ...................................................................................................31 October 2014
`
`File all replies
`
`
`
`TIME PERIOD 5 ............................................................................................... 15 December 2014
`
`File request for oral argument
`
`File motions to exclude
`
`File observations
`
`
`
`TIME PERIOD 6 ................................................................................................... 5 January 2015
`
`File oppositions to motions to exclude
`
`File response to observations
`
`
`
`TIME PERIOD 7 .................................................................................................. 20 January 2015
`
`File replies to oppositions to motions to exclude
`
`
`
`
`
`10
`
`
`
`DEFAULT ORAL ARGUMENT DATE ............................................................................to be set
`
`Default oral argument date (if ordered)
`
`
`
`11
`
`
`
`Kattula, Amy
`
`From:
`Sent:
`To:
`Subject:
`
`Lane, Sally
`Friday, May 30, 2014 1:17 PM
`Kattula, Amy
`email attachment for Interference No. 105,995 - Pastorio v. Levin
`
`
`
`
`From: Gary J. Gershik [mailto:GGERSHIK@COOPERDUNHAM.COM]
`Sent: Wednesday, May 28, 2014 3:52 PM
`To: Interference Trial Section
`Cc: E. Anthony Figg; Danny Huntington; Norman Zivin
`Subject: Interference No. 105,995 - Pastorio v. Levin
`
`
`The May 15, 2014 Order Motion Times Bd. R. 104(c) (Paper No. 24) requires that Senior Party Levin contact
`the Board by May 28, 2014 if it wishes to files a motion which is responsive to Pastorio Motion 1 for no
`interference-in-fact (Paper No. 25). Now that Junior Party Pastorio has disclaimed its claims 13-15, Senior
`Party Levin hereby requests authorization to file a responsive motion to add a claim which corresponds to the
`subject matter of Pastorio remaining claims 1-12 more directly than Levin's current claims 1-10. If authorized
`to file such a responsive motion, Senior Party Levin will designate the responsive motion as contingent upon
`the Board granting Pastorio Motion 1.
`
`Senior Party Levin also requests authorization to file an opposition to Pastorio Motion 1 if the Board finds that
`Pastorio Motion 1 presents a facially sufficient case of no interference-in-fact.
`
`Respectfully submitted,
`
`
`Gary J. Gershik
`Lead Counsel for Senior Party Levin
`
`
`
`Gary J. Gershik
`Cooper & Dunham LLP
`30 Rockefeller Plaza, 20th Floor
`New York, New York 10112
`T: 212-278-0552 F: 212-391-0525
`_______________________________________
`This message is intended solely for the use of the addressee and may contain confidential and/or attorney‐client privileged information. If you are
`not the intended recipient, or an employee or agent responsible for delivering this message to the intended recipient, you are hereby notified that
`any review, distribution, or copying of this message is strictly prohibited. If you received this message in error, please notify us immediately. Thank
`you.
`
`
`
`
`
`
`1
`
`
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