throbber
Trials@uspto.gov
`571-272-7822
`
`
` Paper No: 8
`Entered: August 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`XILINX, INC.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`IPR2017-00843
`Patent 6,969,915 B2
`____________
`
`
`Before MICHAEL J. FITZPATRICK, JENNIFER MEYER CHAGNON,
`and SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Not Instituting Inter Partes Review
`37 C.F.R. §§ 42.107(e), 42.108
`
`

`

`IPR2017-00843
`Patent 6,969,915 B2
`
`
`I. INTRODUCTION
`Background
`A.
`Xilinx, Inc. (“Petitioner”) filed a Petition for inter partes review of
`
`claims 1, 2, 6, 8, and 61 (“the challenged claims”) of U.S. Patent No.
`6,969,915 B2 (Ex. 1001, “the ’915 patent”). Paper 1 (“Pet.”). Godo Kaisha
`IP Bridge 1 (“Patent Owner”) filed a Preliminary Response to the Petition.
`Paper 7 (“Prelim. Resp.”).
`For the reasons described below, we do not institute an inter partes
`
`review of any challenged claim.
`Related Proceedings
`B.
`The ’915 patent is involved in related proceeding Xilinx, Inc. v. Godo
`
`Kaisha IP Bridge 1, Civ. No. 5:17-cv-00509 (N.D. Ca.). Pet. 1. Patent
`Owner also indicates that three petitions for inter partes review have been
`filed for related patents: Cases IPR2017-00841, IPR2017-00842, and
`IPR2017-00844. Paper 4, 1.
`
`II. ANALYSIS
`Under 37 C.F.R. § 42.107(e), “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” and “[n]o inter partes
`review will be instituted based on disclaimed claims.” Under 35 U.S.C.
`§ 253(a), the disclaimer “shall be in writing, and recorded in the Patent and
`Trademark Office; and it shall thereafter be considered as 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. 1. In particular, claims
`
`
`
`2
`
`

`

`IPR2017-00843
`Patent 6,969,915 B2
`
`1, 2, 6, 8, and 61 have been disclaimed via a statutory disclaimer filed on
`May 24, 2017. See Prelim. Resp. 1; Ex. 2001.
`
`Accordingly, because Patent Owner has disclaimed each of the
`challenged claims—namely, claims 1, 2, 6, 8, and 61 of the ’915 patent—
`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 claims 1, 2, 6, 8, and 61 of U.S. Patent No. 6,969,915 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 the challenged
`claims of U.S. Patent No. 6,969,915 B2 is instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`

`

`IPR2017-00843
`Patent 6,969,915 B2
`
`PETITIONER:
`
`Steven H. Slater
`Roger C. Knapp
`SLATER MATSIL, LLP
`sslater@slatermatsil.com
`rknapp@slatermatsil.com
`
`PATENT OWNER:
`
`Gerald B. Hrycyszyn
`Edmund J. Walsh
`Richard F. Giunta
`Elisabeth H. Hunt
`WOLF, GREENFIELD & SACKS, P.C.
`GHrycyszyn-PTAB@wolfgreenfield.com
`EWalsh-PTAB@wolfgreenfield.com
`RGiunta-PTAB@wolfgreenfield.com
`EHunt-PTAB@wolfgreenfield.com
`
`
`
`4
`
`

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