Boxinterference@uspto .gov
`Tel.: 571-272-4683
`
`Filed: August 4, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ANAILEVIN
`and MICHAEL GRABARNICK,
`Junior Party,
`(Application 13/926,389)
`
`v.
`
`ANDREA P ASTORIO and PAOLO BETTI
`Senior Party,
`(Patent 8,304,559)
`
`Patent Interference No. 105,995
`(Technology Center 1600)
`
`ORDER- AUTHORIZING MOTION
`37 C.F.R. § 41.12l(a)
`
`1
`
`2
`
`3
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`4
`
`A telephone conference was held on 3 August 2015, at approximately 2:00
`
`p.m. at the request of junior party Levin. Levin sought to obtain authorization to
`
`file motions for judgment based on unpatentability of the Pastorio involved claims
`
`over the prior art. (See Order- Priority Times, Paper 146, at 1:5-7 .) Gary
`
`5 Gershik and Norman Zivin were present for Levin. Anthony Figg and Danny
`
`6 Huntington were present for senior party Pastorio. Deborah Katz was present for
`
`7
`
`the Board.
`
`FINCHIMICA EXHIBIT 2006
`ADAMA MAKHTESHIM v. FINCH/MICA
`CASE IPR2016-00577
`
`
`Tel.: 571-272-4683
`
`Filed: August 4, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ANAILEVIN
`and MICHAEL GRABARNICK,
`Junior Party,
`(Application 13/926,389)
`
`v.
`
`ANDREA P ASTORIO and PAOLO BETTI
`Senior Party,
`(Patent 8,304,559)
`
`Patent Interference No. 105,995
`(Technology Center 1600)
`
`ORDER- AUTHORIZING MOTION
`37 C.F.R. § 41.12l(a)
`
`1
`
`2
`
`3
`
`4
`
`A telephone conference was held on 3 August 2015, at approximately 2:00
`
`p.m. at the request of junior party Levin. Levin sought to obtain authorization to
`
`file motions for judgment based on unpatentability of the Pastorio involved claims
`
`over the prior art. (See Order- Priority Times, Paper 146, at 1:5-7 .) Gary
`
`5 Gershik and Norman Zivin were present for Levin. Anthony Figg and Danny
`
`6 Huntington were present for senior party Pastorio. Deborah Katz was present for
`
`7
`
`the Board.
`
`FINCHIMICA EXHIBIT 2006
`ADAMA MAKHTESHIM v. FINCH/MICA
`CASE IPR2016-00577
`
`
`
`Interference 105,995
`
`
`Authorization to file several motions arguing that all of Pastorio’s claims are
`unpatentable over the prior art was deferred in the preliminary motions phase of
`the interference after Levin originally filed its list of proposed motions. (See Order
`– Motion Times, Paper 38, at 4:12-15; see Levin List of Proposed Motions, Paper
`21, at 3:3-4:8.) At the beginning of the priority phase, it was noted that Levin
`could renew its request to file these motions. (See Order – Priority Times, Paper
`146, at 1:5-7.) Levin now requests authorization to file a single motion based on
`grounds different than those previously presented. Specifically, Levin requests
`authorization to file a motion arguing the following grounds of unpatentability:
`(1) anticipation by WO 2007/122440 A1 (WO ’440);
`(2) obviousness over WO ‘440 alone or in view of US 6,013,761 to
`Zierer et al. and/or US 3,928,372 to Bochis et al.;
`(3) obviousness over CN 101250158 A in view of WO ’440; and
`(4) anticipation by AU 2010100462 A4 (AU 2010100462 A4).
`Levin’s previous requests cited WO ’440, in combination with several other
`references, as the basis for unpatentability. (See Levin List of Proposed Motions,
`Paper 21, at 3:3-4:8.) During the conference call, Levin indicated that even though
`ground (2) above recites additional references, it could be argued as obviousness
`over WO ’440 alone. Levin’s request to file a single motion arguing that WO ’440
`either anticipates or alone renders obvious Pastorio’s involved claims is
`GRANTED.
`Neither CN 101250158 A nor AU 2010100462 A4 was asserted in Levin’s
`originally proposed prior art motions. Levin argues that an attack on Pastorio’s
`claims based on the Chinese reference of ground (3) is necessary to challenge a
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`Interference 105,995
`
`portion of the asserted scope of Pastorio’s claims depending on constructions of
`their terms. Whether the Board determines questions of patentability is
`discretionary. (See 35 U.S.C. § 135(a): “The Patent Trial and Appeal Board shall
`determine questions of priority of the inventions and may determine questions of
`patentability.”) Levin’s argument does not make it clear that the proceeding would
`be conducted in the most just, speedy, and inexpensive manner due to uncertainties
`about the scope of Pastorio’s claims that would be asserted. See 37 C.F.R.
`§ 41.1(b). Accordingly, Levin’s request regarding CN 101250158 A is DENIED.
`Similarly, Levin notes that its attack on Pastorio’s claims based on the
`Australian reference of ground (4) is contingent on the dates of conception and
`reduction to practice determined for Pastorio. Because judgment in this
`interference may be entered if Levin, as junior party, fails to prove its priority case,
`without reaching Pastorio’s priority case, the most just, speedy, and inexpensive
`priority proceeding is not achieved by consideration of this issue. Accordingly,
`Levin’s request regarding AU 2010100462 A4 is DENIED.
`Furthermore, it is noted that even if Levin is not accorded a chance to pursue
`its some of its arguments against the patentability of Pastorio’s claims in this
`proceeding, other proceedings with the Office may provide opportunities.
`It is ORDERED that Levin is authorized to file one motion, due in Time
`Period 11, asserting that the involved Pastorio claims are unpatentable over WO
`’440 alone under either 35 U.S.C. § 102 or § 103. Levin is not authorized to
`include any other grounds of unpatentability in this motion.
`
`
`
`
`
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`-3-
`
`
`
`Interference 105,995
`
`
`
`
`/Deborah Katz/
`Administrative Patent Judge
`
`
`
`cc (via e-mail):
`
`
`Attorney for Levin:
`
`
`Gary J. Gershik
`Norman H. Zivin
`COOPER & DUNHAM, LLP
`ggershik@cooperdunham.com
`nzivin@cooperdunham.com
`
`
`
`Attorney for Pastorio:
`
`
`E. Anthony Figg
`R. Danny Huntington
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`efigg@rfem.com
`dhuntington@rfem.com
`
`
`
`
`
`
`-4-
`
`
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