Appeal 2007-0393
Reexamination Control 90/006,786
Patent 6,497,843
1 promulgated as part of 37 CFR § 1.321(b) (1971); Final Rule, Conflicting
2 Claims, 36 Fed. Reg. 7312, 7312 (April 17, 1971). Section 1.321(b) is the
3 predecessor of current § 1.321(c)(3).
4 The records of the Office show that the 843 patent and the 620 patent
5 have different ownership. Specifically, the records show that the 843 patent
6 is owned by Zyon, Int’l Inc. while the 620 patent is owned jointly by Zyon,
7 Int’l Inc. and James P. Lee. An infringer subject to a charge of infringement
8 under one patent could also be charged for infringement under the other, at
9 least under the doctrine of equivalents. Since the difference in ownership
10 between the 843 and 620 patents can result in separate suits based upon the
11 separate patents, we hold that under the facts of this case the 620 and 843
12 patents are not commonly owned as that phrase is used in 37 CFR
13 § 1.321(c)(3).
14 In this regard we note that our holding is not inconsistent with the
15 interpretation of “common ownership” in the Manuel of Patent Examining
16 Procedure (MPEP). Paragraph 1490 of the MPEP in discussing the common
17 ownership requirement under 37 CFR § 1.321(c) refers to MPEP
18 ¶ 706.02(1)(2) for examples illustrating the meaning of “common
19 ownership:”
20 The terminal disclaimer must state that any patent
21 granted on the application being examined will be
22 enforceable only for and during the period that it and the
23 patent to which the disclaimer is directed or the patent
24 granted on the application to which the disclaimer is
25 directed are commonly owned. See MPEP § 706.02(1)(2)
26 for examples of common ownership, or lack thereof.
- 13 -
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013