`571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: August 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CONTROLS SOUTHEAST, INC.,
`Petitioner,
`
`v.
`
`QMAX INDUSTRIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00976
`Patent 8,469,082 B2
`____________
`
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.107(e), 42.108
`
`
`
`IPR2017-00976
`Patent 8,469,082 B2
`
`
`I. INTRODUCTION
`
`Controls Southeast, Inc. (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) requesting an inter partes review of claims 1–9, 11, 12, and 18–20
`
`(“the challenged claims”) of U.S. Patent No. 8,469,082 B2 (Ex. 1001, “the
`
`’082 patent”). QMax Industries, LLC (“Patent Owner”) filed a Preliminary
`
`Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`
`§ 314.
`
`In its Preliminary Response, Patent Owner asserts that it “has filed a
`
`statutory disclaimer under 35 U.S.C. § 253(a) disclaiming claims 1–9, 11,
`
`12, and 18–20 of the ‘082 patent,” pursuant to 37 C.F.R. § 42.107(e).
`
`Prelim. Resp. 3. Patent Owner has filed a copy of the statutory disclaimer as
`
`evidence of its assertion. Ex. 2001.
`
`II. REQUEST FOR ADVERSE JUDGMENT
`
`On July 5, 2017, Petitioner sent an email to the Board requesting a
`
`telephone conference to seek authorization to file a motion for adverse
`
`judgment in view of Patent Owner’s disclaimer of all of the challenged
`
`claims. The requested conference call was held on July 12, 2017, between
`
`respective counsel for Petitioner and Patent Owner, and Judges Scanlon,
`
`Worth, and Moore.
`
`During the conference call, Petitioner indicated an adverse judgment
`
`against Patent Owner would be appropriate because Patent Owner’s
`
`disclaimer of all of the challenged claims should be construed as a request
`
`for adverse judgment under 37 C.F.R. § 42.73(b). Petitioner also expressed
`
`concern that, should an adverse judgment not be entered against Patent
`
`Owner, Patent Owner would not be estopped under 37 C.F.R. § 42.73(d)(3)
`
`from obtaining a claim that is not patentably distinct from any of the
`
`
`
`
`2
`
`
`
`IPR2017-00976
`Patent 8,469,082 B2
`
`challenged claims, despite Petitioner having invested significant resources in
`
`this proceeding. Patent Owner contended that adverse judgment was not
`
`appropriate.
`
`After conferring, we denied Petitioner’s request for authorization to
`
`file a motion for adverse judgment. As we explained during the conference
`
`call, 37 C.F.R. § 42.73(b) provides that a party may request judgment
`
`against itself. As such, our rules do not provide a basis for Petitioner to
`
`request an adverse judgment against Patent Owner. Regarding Petitioner’s
`
`contention that Patent Owner’s disclaimer should be construed as a request
`
`for adverse judgment, 37 C.F.R. § 42.73(b) provides that “[a]ctions
`
`construed to be a request for adverse judgment include . . . (2) [c]ancellation
`
`or disclaimer of a claim such that the party has no remaining claim in the
`
`trial” (emphasis added). The term “trial” refers to “a contested case
`
`instituted by the Board based upon a petition,” which “begins with a written
`
`decision notifying petitioner and patent owner of the institution of the trial.”
`
`37 C.F.R. § 42.2. Because it was filed prior to an institution of trial, Patent
`
`Owner’s statutory disclaimer should not be construed as a request for
`
`adverse judgment in this proceeding.
`
`III. ANALYSIS
`
`37 C.F.R. § 42.107(e) provides: “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.”
`
`Patent Owner’s disclaimer is in compliance with 37 C.F.R. § 1.321(a).
`
`Further, Patent Owner’s disclaimer disclaims each one of the challenged
`
`claims. Therefore, there are no asserted grounds remaining for our
`
`
`
`
`3
`
`
`
`IPR2017-00976
`Patent 8,469,082 B2
`
`determination of whether trial should be instituted. Accordingly, we decline
`
`to institute an inter partes review.
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied, and that we do not institute an
`
`inter partes review of any claim of the ’082 patent based on the grounds
`
`asserted in this Petition.
`
`
`
`
`4
`
`
`
`IPR2017-00976
`Patent 8,469,082 B2
`
`
`
`PETITIONER:
`
`Benjamin Leace
`beleace@ratnerprestia.com
`
`Christopher Blaszkowski
`cblaszkowski@ratnerprestia.com
`
`Andrew Koopman
`akoopman@ratnerprestia.com
`
`
`PATENT OWNER:
`
`Chad Tillman
`chad@ti-law.com
`
`Jeremy Doerre
`jdoerre@ti-law.com
`
`
`
`
`
`
`
`5
`
`
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