`571-272-7822
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` Paper No. 12
`
`
` Entered: February 27, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`ULTRATEC, INC.,
`Petitioner,
`
`v.
`
`SORENSON IP HOLDINGS,
`Patent Owner.
`
`——————
`Case IPR2017-01394
`Patent 9,336,689 B2
`——————
`
`Before SALLY C. MEDLEY, STACEY G. WHITE, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`JUDGMENT
`Request for Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`IPR2017-01394
`Patent 9,336,689 B2
`
`
`On May 9, 2017, Petitioner Ultratec, Inc. (“Ultratec”) filed a Petition
`(“Pet.”) to institute an inter partes review of claims 1–20 of U.S. Patent No.
`9,336,689 B2 (Ex. 1003, “the ’689 patent”) pursuant to 35 U.S.C. § 311 et
`seq. Paper 1. Patent Owner Sorenson IP Holdings (“Sorenson”) filed a
`Preliminary Response (“Prelim. Resp.”) to the Petition on September 6,
`2017. Paper 6. On November 30, 2017, we instituted trial as to claims 1–
`20, Paper 7, and on Dec. 11, 2017, we scheduled an oral hearing for August
`13, 2018, Paper 9. Sorenson has not filed a Patent Owner Response, and
`Ultratec has not filed a Reply.
`On February 16, 2018, Sorenson filed a Notice Regarding Filing of
`Disclaimer, notifying us that a Disclaimer (Ex. 2006) was filed in connection
`with the ’689 patent, disclaiming all claims (claims 1–20) of the ’689 patent.
`Paper 10, 1. Sorenson explicitly requests adverse judgment against itself
`pursuant to 37 C.F.R. § 42.73(b)(2) and termination of the inter partes
`review. Paper 10, 1.
`Under 35 U.S.C. § 253(a), a patentee may disclaim its whole interest
`or any sectional interest in any patent claim. When a party in an inter partes
`review disclaims all the claims at issue in the proceeding, we construe the
`disclaimer as a request for adverse judgment. 37 C.F.R. 42.73(b)(1)–(2).
`Because Sorenson has explicitly requested adverse judgment against
`itself, and has statutorily disclaimed all claims in the ’689 patent, Sorenson’s
`request for adverse judgment is granted.
`
`
`
`
`
`2
`
`
`
`IPR2017-01394
`Patent 9,336,689 B2
`
`
`Accordingly, it is hereby:
`ORDERED that judgment is herein entered against Sorenson with
`respect to claims 1–20 of the ’689 patent;
`FURTHER ORDERED that the instant proceeding is terminated;
`FURTHER ORDERED that claims 1–20 of the ’689 patent are herein
`cancelled; and
`FURTHER ORDERED that all scheduled Due Dates (Paper 8) are
`vacated and the hearing scheduled for August 13, 2018 is cancelled.
`
`
`PETITIONER:
`Michael Jaskolski
`Louis A. Klapp
`Nikia L. Gray
`QUARLES & BRADY LLP
`michael.jaskolski@quarles.com
`louis.klapp@quarles.com
`nikia.gray@quarles.com
`
`
`PATENT OWNER:
`Ruben H. Munoz
`John Wittenzellner
`AKIN GUMP STRAUSS HAUER & FELD LLP
`rmunoz@akingump.com
`jwittenzellner@akingump.com
`
`
`
`3
`
`
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