`571-272-7822
`
`
`Paper No. 8
` Entered: June 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BOREALIS AG,
`Petitioner,
`
`v.
`
`BERRY PLASTICS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00564
`Patent 8,883,280 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, SHERIDAN K. SNEDDEN, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.107(e), 42.108
`
`
`
`
`IPR2016-00564
`Patent 8,883,280 B2
`
`
`I.
`
`INTRODUCTION
`Borealis AG (“Petitioner”)1 filed a Petition for inter partes review of
`claims 1, 15–36, 40, 42, 43, 54–61, 63, and 64 (“the challenged claims”) of
`U.S. Patent No. 8,883,280 B2 (Ex. 1001, “the ’280 patent”). Paper 1
`(“Pet.”). Berry Plastics Corporation (“Patent Owner”) filed a Preliminary
`Response to the Petition. Paper 7 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314.
`A. Related Proceedings
`Petitioner also has challenged certain claims of the ’280 patent in
`Borealis AG v. Berry Plastics Corp., Case IPR2016-00235 (“the 235 IPR”).
`Pet. 59; Paper 5, 2. Patent Owner disclaimed each of the claims challenged
`in the 235 IPR, and no trial was instituted. See Case IPR2016-00235 (PTAB
`Mar. 24, 2016) (Paper 11).
`B. The ’280 Patent
`The ’280 patent, titled “Polymeric Material for an Insulated
`Container,” relates to a formulation which can be used to form a container,
`the formulation including a polymeric material, a nucleating agent, a
`blowing agent, and a surface active agent. Ex. 1001, at [54], Abstract.
`Given the procedural posture of this proceeding, we need not discuss further
`the substance of the patent or the Petition.
`
`II. ANALYSIS
`Pursuant to 35 U.S.C. § 253(a), a patentee may “make disclaimer of
`any complete claim . . . . Such disclaimer shall be in writing, and recorded
`in the Patent and Trademark Office; and it shall thereafter be considered as
`
`1 In addition to Borealis AG, the Petition also identifies Borealis Polyolefine
`GmbH and Borealis Compounds, Inc. as real-parties-in-interest. Pet. 59.
`
`
`
`2
`
`
`
`IPR2016-00564
`Patent 8,883,280 B2
`
`part of the original patent.” In its Preliminary Response, Patent Owner
`indicates that it has disclaimed each of the challenged claims under
`35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a). Prelim.
`Resp. 2. In particular, claims 1–14, 36–42, 44–48, 51–54, 61, 62, 65, and 66
`of the ’280 patent previously were disclaimed in response to the petition in
`the 235 IPR, via statutory disclaimers filed on March 9, 2016 and March 22,
`2016. See Prelim. Resp. 2; Ex. 2101; Ex. 2102. Claims 15–35, 43, 55–60,
`63, and 64 have been disclaimed via a statutory disclaimer filed on May 23,
`2016. See Prelim. Resp. 2; Ex. 2103.
`Further, 37 C.F.R. § 42.107(e) provides that, in response to a petition,
`the “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in
`compliance with § 1.321(a) of this chapter, disclaiming one or more claims
`in the patent. No inter partes review will be instituted based on disclaimed
`claims.” Accordingly, because Patent Owner has disclaimed each of the
`challenged claims—namely, claims 1, 15–36, 40, 42, 43, 54–61, 63,
`and 64—inter partes review will not be instituted based on those claims.
`
`III. CONCLUSION
`For the foregoing reasons, we do not institute an inter partes review
`of U.S. Patent No. 8,883,280 B2.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a), no inter partes
`review of U.S. Patent No. 8,883,280 B2 is instituted.
`
`
`
`
`3
`
`
`
`IPR2016-00564
`Patent 8,883,280 B2
`
`PETITIONER:
`Mark J. Feinstein
`Joshua L Goldberg
`Hojung Cho
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`mark.feldstein@finnegan.com
`joshua.goldberg@finnegan.com
`hojung.cho@finnegan.com
`
`
`
`PATENT OWNER:
`John V. Hobgood
`Yung-Hoon Ha, Ph.D.
`WILMER CUTLER PICKERING HALE AND DORR LLP
`John.Hobgood@wilmerhale.com
`Yung-Hoon.Ha@wilmerhale.com
`WHIPDocketStaff@wilmerhale.com
`
`
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
