`Tel: 571-272-7822
`
`Paper 15
`Entered: September 11, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01096
`Patent 8,572,943 B1
`____________
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`JUDGMENT AND FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`In this matter, General Electric Company (“Petitioner”) initially
`requested inter partes review of claims 1–7, 10–14, and 16–20 of U.S.
`Patent No. 8,572,943 B1 (“the ’943 patent”). Paper 1. United Technologies
`Corporation (“Patent Owner”) filed a Preliminary Response (Paper 6). The
`Board granted the Petition, instituting on all challenged claims. Paper 7.
`
`
`
`
`1
`
`
`
`IPR2017-01096
`Patent 8,572,943 B1
`On February 16, 2018, Patent Owner filed a Patent Owner’s
`Response. Paper 13 (“Response” or “PO Resp.”). The Response notified
`the Board of Patent Owner’s filing of a Disclaimer under 37 C.F.R.
`§ 1.321(a), disclaiming claims 1–7, 10–14, and 16–20 of the ’943 patent.
`PO Resp. 1. Patent Owner has filed a copy of the Disclaimer. Ex. 2019.
`The Response concludes that, due to the disclaimer, “this IPR should be
`terminated.” PO Resp. 1. On March 22, 2018, Petitioner filed a Reply to
`the Response. Paper 14 (“Reply”). According to Petitioner, 37 C.F.R.
`§ 42.73(b) “provide[s] that the Board should construe Patent Owner’s
`disclaimer as a request for adverse judgment,” rather than a request for
`termination under 37 C.F.R. § 42.72. Reply 1–2. A party may request entry
`of adverse judgment against itself at any time during a proceeding. 37
`C.F.R. § 42.73(b). “Actions construed to be a request for adverse judgment
`include . . . [c]ancellation or disclaimer of a claim such that the party has no
`remaining claim in the trial.” Id. § 42.73(b)(2). That is the case here, where
`Patent Owner has disclaimed claims 1–7, 10–14, and 16–20, all the claims
`challenged in the present trial. Under these circumstances, entry of
`judgment adverse to the Patent Owner is appropriate.
`ORDER
`
`In view of the foregoing, it is:
`ORDERED that, to the extent Patent Owner is requesting termination
`instead of adverse judgment, the request is denied;
`FURTHER ORDERED that adverse judgment against Patent Owner
`in this proceeding is entered under 37 C.F.R. § 42.73(b)(2); and
`FURTHER ORDERED that this constitutes a Final Written Decision
`under 35 U.S.C. § 318(a).
`
`
`
`
`IPR2017-01096
`Patent 8,572,943 B1
`For PETITIONER:
`
`WEIL, GOTSHAL & MANGES LLP
`Anish R. Desai
`Brian E. Ferguson
`Christopher Pepe
`anish.desai@weil.com
`brian.ferguson@weil.com
`christopher.pepe@weil.com
`GEWGM.Service@weil.com
`
`For PATENT OWNER:
`
`FISH & RICHARDSON P.C.
`W. Karl Renner
`Timothy W. Riffe
`David L. Holt
`IPR43498-0011IP2@fr.com
`PTABInbound@fr.com
`
`
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