`571-272-7822
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` Paper 11
`
`
` Entered: March 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`BOREALIS AG,
`Petitioner,
`v.
`BERRY PLASTICS CORPORATION,
`Patent Owner.
`__________
`
`Case IPR2016-00235
`Patent 8,883,280 B2
`
`
`
`
`
`Before FRED E. McKELVEY, SALLY C. MEDLEY, and SHERIDAN K.
`SNEDDEN, Administrative Patent Judges.
`
`McKELVEY, Administrative Patent Judge.
`
`
`DECISION
`Declining to Institute Inter Partes Review
`37 C.F.R. § 42.108
`
`I. Introduction
`A. Background
`Pending before the Board is a “PETITION FOR INTER PARTES
`
`REVIEW OF U.S. PATENT NO. 8,883,280 [B2].” Paper 2.
`
`Patent Owner timely filed a Preliminary Response. Paper 9.
`
`
`
`
`IPR2016-00235
`Patent 8,883,280 B2
`
`
`
`
`
`
`B. The Parties
`Petitioner is Borealis AG. Paper 2, page 1.
`Patent Owner is Berry Plastics Corporation. Paper 5, page 2.
`C. Involved Patent
`The involved patent is U.S. Patent No. 8,883,280 B2 issued
`
`11 November 2014. Ex. 1001 (“Polymeric Material for an Insulated
`Container”).
`
`The patent contains claims 1–66. Ex. 1001, col. 24:2 to col. 30:26.
`
`Petitioner seeks cancellation of claims 1–14, 36–42, 44–48, 51–54,
`61, 62, 65, and 66. Paper 2, page 1:1–2.
`D. Preliminary Response
`In its Preliminary Response, Patent Owner—while disagreeing with
`
`the arguments made in the Petition—nevertheless advises the Board that it
`has filed a disclaimer of the claims of the patent sought to be cancelled by
`the Petition. Paper 9, page 2; Ex. 2002 (Disclaimer of Patent under 37 CFR
`1.312(a)—signed by counsel for Patent Owner).
`
`Subsequent to filing of the Preliminary Response, Patent Owner filed
`a second disclaimer of the claims sought to be cancelled. Ex. 2003, page 4
`(Disclaimer of Patent under 37 CFR 1.321(a)—signed by Jason Humphrey,
`Vice-President Tax—Berry Plastics Corp.).
`II. Analysis
`The Director has delegated to the Board authority to determine
`
`whether to institute an inter partes review. 37 C.F.R. § 42.4(a) (2015).
`
` 2
`
`
`
`
`
`
`
`
`IPR2016-00235
`Patent 8,883,280 B2
`
`
`
`The Director has determined that:
`The patent owner may file a statutory disclaimer under
`35 U.S.C. 253(a), in compliance with §321(a) of this
`chapter, disclaiming one or more claims in the patent. No
`inter partes review will be instituted based on disclaimed
`claims.
`
`
`
`37 C.F.R. § 41.107(e) (2015).
`In view of the disclaimer (Ex. 2003), an inter partes review will not
`
`be instituted.
`
`III. Order
`Upon consideration of the Petition (Paper 2) and the second
`disclaimer (Ex. 2003), and for the reasons given, it is
`ORDERED that the Petition is denied as to all challenged claims.
`
`PETITIONER:
`Mark Feldstein
`Joshua Goldberg
`Hojung Cho
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`mark.feldstein@finnegan.com
`joshua.goldberg@finnegan.com
`hojung.cho@finnegan.com
`
`PATENT OWNER:
`John Hobgood
`Yung-Hoon Ha
`Wilmer Cutler Pickering Hale & Dorr LLP
`john.hobgood@wilmerhale.com
`yung-hoon.ha@wilmerhale.com
`
` 3
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