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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC,
`Petitioners,
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`v.
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`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`_____________
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`Case No. IPR2017-01068
`Patent 5,859,601
`_____________
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`PATENT OWNER’S WAIVER OF PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(b)
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`304406965 v1
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`Pursuant to 37 C.F.R. §42.107(b), Patent Owner, Regents of the University
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`of Minnesota (“UMN”), hereby elects to waive its Patent Owner Preliminary
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`Response to the inter partes review petition (“Petition”) filed by LSI Corporation
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`and Avago Technologies U.S., Inc. for certain claims of U.S. Patent 5,859,601
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`(“the ‘601 Patent,” Ex. 1001). The Petition challenged claims 1, 2, 8-10, 12-17
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`and 21 of the ‘610 Patent. See Petition (Paper No. 1) at p. 1.
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`The Board’s Order of August 19, 2019 in this case ordered that “the deadline
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`for Patent Owner to file a preliminary response in this proceeding will be two (2)
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`months from the expiration of the deadline to file, or the final disposition of, a
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`petition for writ of certiorari in the Supreme Court for Regents of the University of
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`Minnesota v. LSI Corp., Case No. 2018-1599.” Paper No. 28 at 3. The Supreme
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`Court denied UMN’s petition for writ of certiorari on January 13, 2020. Paper No.
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`30. Thus, this waiver is being filed within the two-month time limit set by the
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`Board in its August 19, 2019 Order.
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`No adverse inference should be taken by this election. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (August 14, 2012). This election
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`should not be deemed a waiver or admission on the part of UMN of any material
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`presented in the Petition and UMN reserves all rights to submit a Patent Owner
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`Response pursuant to 37 C.F.R. §42.120.
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`304406965 v1
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`On February 14, 2020, UMN filed with the U.S. Patent and Trademark
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`Office a statutory disclaimer of claims 1-12, 15, 16 and 21 of the ‘601 Patent under
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`35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). A copy of the statutory disclaimer is
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`submitted as Exhibit 2001 in this proceeding. Based on this disclaimer, the ‘601
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`Patent is to be treated as though claims 1-12, 15, 16 and 21 never existed. See
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`Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This
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`court has interpreted the term ‘considered as part of the original patent’ in section
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`253 to mean that the patent is treated as though the disclaimed claims never
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`existed.”). As a result of the statutory disclaimer of claims 1-12, 15, 16 and 21 and
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`pursuant to 37 C.F.R. § 42.107(e), it is respectfully submitted that the institution
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`decision in this proceeding should be based only on the remaining challenged
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`claims, which are claims 13, 14 and 17 of the ‘601 Patent.
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`Dated: February 14, 2020
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`304406965 v1
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`Respectfully submitted,
`Regents of the University of Minnesota
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`By /Mark G. Knedeisen/
`Patrick J. McElhinny, Reg. No. 46,320
`Mark G. Knedeisen, Reg. No. 42,747
`K&L GATES LLP
`210 Sixth Ave.
`Pittsburgh, PA 15222
`Tel: 412-355-6500 / Fax: 412-355-6501
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`I certify that on February 14, 2020, I will cause a copy of the foregoing
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`document, including any exhibits or appendices referred to therein, to be served via
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`electronic mail, as previously consented to by Petitioner, upon the following:
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`Kristopher Reed
`Edward Mayle
`David Sipiora
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`Date: February 14, 2020
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`kreed@kilpatricktownsend.com
`tmayle@kilpatricktownsend.com
`dsipiora@kilpatricktownsend.com
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`/ Mark G. Knedeisen/
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`304406965 v1
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