8-K

UNITED STATES

SECURITIES AND EXCHANGE COMMISSION

WASHINGTON, D.C. 20549

FORM 8-K

CURRENT REPORT

Pursuant to Section 13 or 15(d) of the

Securities Exchange Act of 1934

Date of report (Date of earliest event reported):  February 27, 2019

Health Discovery Corporation

(Exact name of registrant as specified in charter)

Georgia	333-62216	74-3002154
(State of incorporation)	(Commission File Number)	(IRS Employer Identification No.)

4243 Dunwoody Club Drive, Suite 202, Atlanta GA  30350

(Address of principal executive offices / Zip Code)

(678) 336-5300

(Registrant’s telephone number, including area code)

Check the appropriate box below if the Form 8-K filing is intended to simultaneously satisfy the filing obligation of the registrant under any of the following provisions:

¨ Written communications pursuant to Rule 425 under the Securities Act.

¨ Soliciting material pursuant to Rule 14a-12 under the Exchange Act.

¨ Pre-commencement communications pursuant to Rule 14d—2(b) under the Exchange Act.

¨ Pre-commencement communications pursuant to Rule 13e—4(c) under the Exchange Act.

Indicate by check mark whether the registrant is an emerging growth company as defined in Rule 405 of the Securities Act of 1933 (§230.405 of this chapter) or Rule 12b-2 of the Securities Exchange Act of 1934 (§240.12b-2 of this chapter).

Emerging growth company ¨

If an emerging growth company, indicate by check mark if the registrant has elected not to use the extended transition period for complying with any new or revised financial accounting standards provided pursuant to Section 13(a) of the Exchange Act. ¨

ITEM 7.01 Regulation FD Disclosure

As previously disclosed in September 2016, Health Discovery Corporation received notification that the United States Patent and Trademark Office (“USPTO”) had declared an Interference between Health Discovery Corporation’s pending patent application covering SVM-Recursive Feature Elimination (“SVM-RFE”) and Intel Corporation’s Patent No. 7,685,077, entitled “Recursive Feature Eliminating Method based on a Support Vector Machine”.  Prior to 2013, when the America Invents Act (AIA) was enacted, a patent would be awarded to the “first to invent” a claimed invention. An Interference is an administrative proceeding within the USPTO that is used to determine which party was the first to invent an invention that is claimed in two (or more) independently-owned patent applications.  

On February 27, 2019, the USPTO ruled in favor of Health Discovery Corporation on the SVM-RFE Patents in the Interference proceeding between Health Discovery Corporation and Intel Corporation. The Patent Trial and Appeal Board (“PTAB”) of the USPTO issued its decision, finding that Health Discovery Corporation is entitled to claim exclusive rights to the SVM-RFE technology as set forth in the pending patent application that was filed to provoke the Interference.  The decision, issued by Administrative Patent Judge James Moore, ordered Intel’s patent to be cancelled.  The decision also dismissed Intel’s motions challenging the validity of Health Discovery Corporation’s pending claims and issued patents covering SVM-RFE. Health Discovery Corporation is currently evaluating its options for further action regarding this matter.

ITEM 9.01 Financial Statements and Exhibits

(a) Not applicable

(b) Not applicable

(c) Not applicable

(d) Exhibits

Exhibit 99.1 – USPTO Decision

Exhibit 99.2 – USPTO Judgment

SIGNATURES

Pursuant to the requirements of the Securities Exchange Act of 1934, the registrant has duly caused this report to be signed on its behalf by the undersigned thereunto duly authorized.

	HEALTH DISCOVERY CORPORATION
Dated:  February 28, 2019	By:	/s/ George H. McGovern, III
		George H. McGovern, III Chairman & Chief Executive Officer

EX-99.1

Exhibit 99.1

BoxInterferences@uspto.gov
Tel: 571-272-9797	Entered: February 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Eric Q. Li

and

Quian Diao

Junior Party

(Patent 7,685,077 C1),

v.

Jason Weston

and

Isabelle Guyon,

Senior Party

(Application 12/994,197).

(Patent Interference No. 106,066) (JTM)

(Technology Center 2100)

Before SALLY GARDNER LANE, JAMES T. MOORE,

and DEBORAH KATZ, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON MOTIONS

37 C.F.R. § 41.125

Interference 106,066 (JTM) – Li v. Weston – Motions Decision

1 I. Background

2 An interference was declared under 35 U.S.C. § 135(a). Paper 1. Eric Q. Li

3 and Quian Diao (“Li”) were assigned the status of junior party with an initial

4 application filing date of July 20, 2006. Id., 6. Jason Weston and Isabelle Guyon.

5 (“Weston”) were assigned the status of senior party with an initial application

6 filing date of January 31, 2005. Id.

7 The interference count is as follows (with a minor typographical correction):

8 Count 1. A method, comprising:

9 determining a value for each feature in a group of features

10 provided by a training data;

11 eliminating at least one feature with one of a minimum value

12 and a maximum value from the group;

13 retrieving a kernel data from a buffer;

14 subtracting a matrix from the kernel data to provide an updated

15 kernel data, each component of the matrix comprising a dot product of

16 two of training samples provided by at least a part of the training data

17 that corresponds to the eliminated feature;

18 updating the value for each feature of the group based on the

19 updated kernel data;

20 repeating of eliminating the at least one feature from the group

21 and updating the value for each feature of the group until a number of

22 features in the group reaches a predetermined value to generate a

23 feature ranking list;

24 recognizing a new data corresponding to the group of features

25 with the feature ranking list.

26

27 Paper 1, 5.

28 Following a conference call on November 9, 2016, the following motions

29 were authorized in an order dated November 15, 2016 (Paper 17):

30 Li Motion 1 – to redefine the scope of the interference to add claims 1–38 of

31 Weston Patent 8,095,483 (“the ’483 patent”), claims 1–19 of Weston Patent

2

Interference 106,066 (JTM) – Li v. Weston – Motions Decision

1 7,542,959 (“the ’959 patent”), and claims 1–23 of Weston Patent 7,117,188 (“the

2 ’188 patent”). Id, 2.

3 Li Motion 2 – seeking benefit for Count 1 of the filing date of International

4 Patent Application No. PCT CN2005 001242, filed August 11, 2005. Id.

5 Li Motion 4 – seeking judgment of unpatentability of the Weston claims

6 corresponding to Count 1, on the basis of 35 U.S.C. § 101. Id.

7 Weston Motion 1 – seeking benefit for Count 1 of the filing dates of PCT

8 Application No. PCT/US2002/035576, filed November 7, 2002; U.S. Application

9 No. 10/057,849, filed January 24, 2002; and US Provisional Applications

10 60/263,696, 09/633,410, and 60/191,219.

11 Weston Motion 4 – seeking judgment of unpatentability under 35 U.S.C.

12 §101 as being directed to non-statutory subject matter.

13 Certain (but not all) authorized motions, oppositions, and replies, along with

14 exhibit lists and the exhibits, have been filed by the parties. The motions are ready

15 for decision. We find that the record is complete enough to obviate the need for

16 oral argument. Li’s and Weston’s requests for Oral Argument (Papers 142 and

17 143) are therefore denied.

18 Weston filed a priority statement relying upon its earliest claimed priority

19 date of February 24, 2000. Paper 91.

20 Li filed a priority statement indicating it was relying on the benefit date

21 accorded in the Declaration (Paper 1), namely July 20, 2006. Paper 23.

22 Consequently, given that the benefit issues are dispositive, we take up the benefit

23 and priority issues first. 37 C.F.R. § 41.125(a).

24

25

3

Interference 106,066 (JTM) – Li v. Weston – Motions Decision

1 II. Li Motion 2 – Benefit

2

3 Li elected not to file authorized Li Motion 2 for benefit.

4 Li states:

5 Junior Party Li requested, and was authorized to file, a motion under Bd. R.

6 121(a)(1)(ii) and Standing Order ¶ 208.4.1 to be accorded the benefit for

7 Count 1 of the filing date of International Patent Application No. PCT

8 CN2005 001242. Paper No. 14, 2; Paper No. 17, 2, 4. This authorized

9 motion was styled Li Motion 2. Paper No. 17, 2, 4. Li hereby provides

10 notice that it will not be filing Li Motion 2.

11

12 Paper 22, 1.

13

14 In the absence of Li Motion 2, it becomes readily apparent that Li cannot

15 prevail on priority in this case. In fact, Li admits as much.

16 In Li Opposition 1, Li states:

17 Li is not contesting priority of invention in this interference, and the January

18 31, 2005 priority date already accorded to Weston predates Li’s July 20,

19 2006 accorded priority date. Thus, even if Weston’s earliest requested

20 priority date of August 2000 were awarded, it would have no effect on a

21 priority determination in this interference.

22

23 Paper 125, 1.

24 Inasmuch as we “shall determine” issues of priority and “may determine”

25 questions of patentability, we next consider whether we should exercise our

26 discretion to address the remaining issues in this interference. 35 U.S.C. § 135(a).

27

28

29

4

Interference 106,066 (JTM) – Li v. Weston – Motions Decision

1 III. Other Motions

2 After Li Paper 22 was filed, Weston indicated it was not filing Weston

3 Motion 4 regarding unpatentability of Li’s claims. Paper 63.

4 That leaves, in terms of motions pending for resolution:

5 Weston Motion 1 – seeking benefit of the filing dates of PCT Application

6 No. PCT/US2002/035576, filed November 7, 2002; U.S. Application No.

7 10/057,849, filed January 24, 2002; and US Provisional Applications 60/263,696,

8 09/633,410, and 60/191,219. As Weston will prevail on priority, and we take up

9 no other motions, we need not decide this motion. Weston Motion 1 is therefore

10 DISMISSED.

11 Weston thus has no motions remaining in this interference.

12 Li Motion 1 – to redefine the scope of the interference to add claims 1–38 of

13 Weston Patent 8,095,483 (“the ’483 patent”) claims 1–19 of Weston Patent

14 7,542,959 (“the ’959 patent”) and claims 1–23 of Weston Patent 7,117,188 (“the

15 ’188 patent”). Id, 2. Given that Li has conceded priority, we no longer see the

16 need to decide this motion, as it adds numerous patents, claims, and complexity to

17 the proceedings, which determination has become superfluous in light of the

18 discharge of this issue of priority in this proceeding. Moreover, but not the sole

19 basis for our decision, we are dubious of the legal concept of maintaining a patent-

20 patent interference within the Office, which this motion essentially requests.

21 We therefore DISMISS Li Motion 1.

22 Li Motion 4 – seeking judgment of unpatentability of the Weston claims

23 corresponding to Count 1, on the basis of 35 U.S.C. § 101. Id.

24 This is the central issue remaining before the Board for resolution. Should

25 we exercise our discretion under 35 U.S.C. § 135(a) and consider the issues raised

5

Interference 106,066 (JTM) – Li v. Weston – Motions Decision

1 in Li Motion 4 when they are unnecessary to the determination of priority? After

2 carefully considering the facts and posture of this particular case, we determine

3 that we should not.

4 On the one hand, the issues were briefed to the Board.

5 On the other hand, the issues are unrelated to the central issue of priority.

6 Furthermore, had it been made clear from the outset that Li would not file Li

7 Motion 2 (which was, ultimately, the sole reason for proceeding in this

8 interference) we would have entered judgment much earlier and not authorized the

9 motions at all. Additionally, given the intervening development of caselaw and

10 official guidance under 35 U.S.C. § 101, we would require updated briefing on this

11 matter as to the state of the law. Finally, this matter has been pending sufficiently

12 long as to make that route unappealing from a cost and additional delay standpoint.

13 Consequently, we exercise our discretion to DISMISS Li Motion 4, as the

14 central issue of priority has been addressed in this proceeding.

15

16 VI. Order

17 Li Motion 1 is DISMISSED.

18 Li Motion 4 is DISMISSED.

19 Weston Motion 1 is DISMISSED.

20 A judgment against Junior Party Li accompanies this decision.

6

Interference 106,066 (JTM) – Li v. Weston – Motions Decision

cc (electronic delivery):

Attorneys for Junior Party Li – (Intel Corporation)

R. Danny Huntington

William N. Hughet

Rothwell, Figg, Ernst & Manbeck, P.C.

dhuntington@rfem.com

whughet@rfem.com

Amanda J. Tessar

Kourtney Mueller Merrill

Perkins Coie, LLP

atessar@perkinscoie.com

kmerrill@perkinscoie.com

Attorneys for Senior Party Weston – (Health Discovery Corporation)

Eleanor Musick

Scott H. Davison

Musick Davison, LLP

eleanor@mdiplaw.com

scott@mdiplaw.com

Stuart S. Levy

Stuart S. Levy, LLC

stuartslevyllc@gmail.com

7

EX-99.2

Exhibit 99.2

BoxInterferences@uspto.gov
Tel: 571-272-9797	Entered: February 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Eric Q. Li

and

Quian Diao

Junior Party

(Patent 7,685,077 C1),

v.

Jason Weston

and

Isabelle Guyon,

Senior Party

(Application 12/994,197).

(Patent Interference No. 106,066) (JTM)

(Technology Center 2100)

Before SALLY GARDNER LANE, JAMES T. MOORE,

and DEBORAH KATZ, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

JUDGMENT - Bd. R. 127(a)

Interference 106,066 (JTM) – Li v. Weston – Judgment

1 The Board has dismissed all pending motions. Paper 148.

2 Li’s earliest alleged priority date of July 20, 2006 (Paper 23) is after

3 Weston’s accorded priority date of January 31, 2005.

4 Accordingly, Li cannot prevail on priority.

5 Accordingly,

6 It is ORDERED that judgment on priority is entered against junior party Li

7 as to Count 1, the sole Count, of the interference. Paper 1, 5.

8 FURTHER ORDERED that claims 1–15 of Li patent 7,685,077 C1 are

9 cancelled. 35 U.S.C. § 135(a);

10 FURTHER ORDERED that the parties are directed to 35 USC § 135(c) and

11 Bd. R. 205 regarding the filing of settlement agreements;

12 FURTHER ORDERED that a party seeking judicial review timely serve

13 notice on the Director of the United States Patent and Trademark Office.

14 37 C.F.R. §§ 90.1 and 104.2. See also Bd. R. 8(b);

15 Attention is directed to Biogen Idec MA, Inc., v. Japanese Foundation for

16 Cancer Research, 785 F.3d 648, 654–57 (Fed. Cir. 2015) (determining that pre-

17 AIA § 146 review was eliminated for interference proceedings declared after

18 September 15, 2012); and

19 FURTHER ORDERED that a copy of this judgment be entered into the

20 administrative records of the involved Li patent and Weston application.

2

Interference 106,066 (JTM) – Li v. Weston – Judgment

cc (electronic delivery):

Attorneys for Junior Party Li – (Intel Corporation)

R. Danny Huntington

William N. Hughet

Rothwell, Figg, Ernst & Manbeck, P.C.

dhuntington@rfem.com

whughet@rfem.com

Amanda J. Tessar

Kourtney Mueller Merrill

Perkins Coie, LLP

atessar@perkinscoie.com

kmerrill@perkinscoie.com

Attorneys for Senior Party Weston – (Health Discovery Corporation)

Eleanor Musick

Scott H. Davison

Musick Davison, LLP

eleanor@mdiplaw.com

scott@mdiplaw.com

Stuart S. Levy

Stuart S. Levy, LLC

stuartslevyllc@gmail.com

3