Free Answering Brief in Opposition - District Court of Delaware - Delaware

Case 1:04-cv-01230—G|\/IS Document 73-11 Filed 12/15/2005 Page 1 of 4
EXHIBIT J

Case 1 :04-cv-01230-GMS Document 73-1 1 Filed 12/15/2005 Page 2 of 4
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
A- In re application of: Keqi Tang, et al, Docket: 102'/E8-200
Reexamination 90/007,724 Art Unit: 3992
Control No; i
Patent N0.: 6,528,784 Examiner: Erik Kickin
Assignee: Thermo Finnigan LLC Conf No, 6706
Title: MASS SPECTROMETER SYSTEM INCLUDING A DOUBLE ION
GUIDE INTERFA.CE AN D METHOD OF OPERATION
COMMUNICATION OF PATENT OVVNER IN RESPONSE TO ORDER GRAQNTIN G
EX PARTE REEXAIWINATION
Mail Stop Ex Parte Reexam
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 223134450
Dear Sir:
An "Order Granting Request for Ex Porte Reexaminatiorf was issued in this proceeding
on November 4, 2005.
The Patent Owner, Thermo Finnigan LLC, through its undersigned attorney acting in
representative capacity under 37 CFR §i (.34, hereby advises as follows:
1. As the PTO already is aware, but in any event as further reiected in the
concurrentlyvitiled "Staternent Under 37 CFR. §1,565," the patent to which this zeexaniination .
CERTIFICATE OF MAILING OR TRANSMISSION (37 CFR 1.8(a))
I hereby certify that this correspondence {uiong with any paper referred to as being attached or enclosed) is being:
E deposited with the United States Postal Service on the date shown below with sufficient postage as that class mail in
an envelope addressed to Mail Stop Ex Porte Reexam, Commissioner for Patents, RO. Box M50, Alexandria, VA
223 i3··l450. ·
E:] transmitted by facsimile on the date shown below to the United States Patent an Trademark Office via facsimile at
{571) 273-8300. I I I/~,.·‘
Date Signed: _ , i
Elizabeth = Gslletta
nv

Case 1 :04-cv-01230-GMS Document 73-1 1 Filed 12/15/2005 Page 3 of 4
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relates, namely, U.S. Patent No. 6,528,784, is currently involved in pending litigation. That
litigation is entitled Thermo Finnigan LLC v. Applera Corporation, MDS Inc. and Applied
Biosystems/1l4DS Sciex Instruments, which is pending in the U.S. District Court for the District of
Delaware, Civil Action No. 05·~1l0—GMS. ln that litigation, Claims 1 and 4 ofthe patent are
alleged to be infringed.
2. lt is understood that, as provided for in 35 U.S.C. §305, this reexarnination
proceeding is required to be conducted by the PTO with “special dispatcl1." It is further
understood that the fact that the patent under reexamination is involved in pending litigation
dictates that "the examination following the statement by the patent owner . . . and the repiy by
the requester . . . will be expedited to the extent possible? MPEP {$2286.
3. Expedited examination in this proceeding is requested and is particularly
appropriate in this proceeding. In the above—noted district court action, and by Order ofthe
Court dated May 9, 2005, the action has been scheduled for trial commencing on December 4,
2006.
4. In aid of expediting this reexamination proceeding, the Patent Owner hereby
states that it will not be i`1H11g a Patent Owner’s Statement under 37 CFR §1 .530.
Accordingly, the time periods for any such statement and any requester reply should be deemed
"expired" under 35 U.S.C. §305, such that the PTO should, pursuant to that statute and MPE?
§2286, immediately proceed to ax parte examination to be ‘°expedited to the extent possible?
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Case 1 :04-cv-01230-GMS Document 73-1 1 Filed 12/15/2005 Page 4 of 4
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If the Examiner has any questions, the Examiner is invited and encouraged to contact the
patent ow11er’s representative at the telephone number listed below.
Respeeiztully submitted,
Themo FiI111lg311LLC
Date: 2005
l Elizabeth A. Gelletta
Reg. No. 5 941
CONTACT INFORMATION:
W"lGGHsi AND DANA LLP
One Century Tower
New Haven, CT 06508-1 832
Telephone: (203) 498-4345
Facsimile: (203) 782-2889
Email: [email protected]
. CERTIFICATE OF SERVICE
The undersigned hereby certifies that the foregoing "Communieetion of Patent Owner in
Response to Order Granting Ex Porte Reexan1ination" was this day served, by tirsnclass mail,
postage pre-paid, on the following attorney for the requester: Lewis V. Popovski, Esq.,
KENYON & KENYON, One Broadway, New York, New York 10004.
Date:
Eli e . Galletta
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