Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 14
`Entered: November 15, 2017
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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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` OPUS KSD INC.,
`Petitioner,
`
`v.
`
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` INCISIVE SURGICAL INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01438
`Patent 8,821,517 B2
`____________
`
`
`Before FRANCES L. IPPOLITO, JAMES A. WORTH, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`
`IPPOLITO, Administrative Patent Judge.
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`
`
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`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Dismissing Motion to Deem Facts Admitted
`37 C.F.R. § 42.23
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`
`
`

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`IPR2017-01438 (Patent 8,821,517 B2)
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`I. INTRODUCTION
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`On May 15, 2017, Petitioner, Opus KSD, filed a Petition requesting
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`inter partes review of claims 1–8 of U.S. Patent No. 8,821,517 B2 (“the
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`’517 patent”). Paper 1 (“Pet.”). Patent Owner, Incisive Surgical Inc., filed a
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`Preliminary Response. Paper 6 (“Prelim. Resp.”). With its Preliminary
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`Response, Patent Owner filed a copy of a statutory disclaimer disclaiming
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`challenged claims 1–8 of the ’517 patent. Ex. 2001.
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`After authorization, Petitioner filed a Reply to the Preliminary
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`Response, requesting that we treat Patent Owner’s statutory disclaimer as a
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`request for adverse judgment, or, alternatively institute inter partes review
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`over the challenged claims based on the grounds of unpatentability presented
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`in the Petition. Paper 9 (“Reply”). Patent Owner filed an authorized Sur-
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`reply to Petitioner’s Reply responding to Petitioner’s request for entry of
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`adverse judgment. Paper 10 (“Sur-reply”).
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`Additionally, after authorization, Petitioner filed a Motion to Deem
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`Facts Admitted directed to certain “Statements of Facts” presented in its
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`Petition, (Paper 8 (“Mot.”)); Patent Owner filed an Opposition to
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`Petitioner’s Motion (Paper 11); and Petitioner filed a Reply to Patent
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`Owner’s Opposition (Paper 13).
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`We have reviewed the parties submissions and, for the reasons
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`discussed below, we deny the Petition for inter partes review. Further,
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`because the Petition is denied, and no inter partes review is instituted, we
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`also dismiss as moot Petitioner’s Motion to Deem Facts Admitted.
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`II. RELATED PROCEEDINGS
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`Patent Owner represents that U.S. Patent No. 9,713,472 (“the ’472
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`patent”) and U.S. Patent Application No. 15/630,461 (“the ’461
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`application”) are continuations of the ’517 patent. Prelim. Resp. 3.
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`2
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`IPR2017-01438 (Patent 8,821,517 B2)
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`III. DENYING INSTITUTION OF INTER PARTES REVIEW
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`A. Petitioner’s Contentions
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`In its Reply, Petitioner asserts that Patent Owner’s disclaimer of all
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`claims of the ’517 patent should be treated as a request for adverse judgment
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`under 37 C.F.R. 42.73(b)(1). Reply 1. According to Petitioner, disclaimer
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`of all claims in the ’517 patent is essentially a disclaimer of the patent. Id. at
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`1–2. Further, Petitioner argues that per Rule 42.73(b), a party may request
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`adverse judgment against itself at any time during a “proceeding,” and that
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`Rule 42.73(b)(1), unlike Rule 42.73(b)(2), is not limited to the “trial.” Id. at
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`2.
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`Petitioner further argues that Patent Owner’s “undisclosed claim
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`copying, the hardship to Petitioner, and the policy interest in finality and
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`repose” are equitable considerations in favor of entering adverse judgment.
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`Reply 1–3. Petitioner further contends that Patent Owner copied Petitioner’s
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`claims verbatim and did not notify the Office during the prosecution of the
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`’517 patent of claim copying and priority issues. Id. at 3. Petitioner adds
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`that “Incisive’s strategy, left unchecked, invites Incisive to thwart IPR
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`review by filing successive disclaimers and continuation applications, at
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`Petitioner’s and the public’s potential cost.” Id. at 4. In this regard,
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`Petitioner relies on Smith & Nephew, Inc. v. Arthrex, Inc., Case IPR2016–
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`00917, slip op. at 8 (PTAB Sept. 21, 2016) (Paper 12) (“Arthrex”), where
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`the panel stated that “treating the disclaimer as a request for adverse
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`judgment is in keeping with ‘the policies of finality and repose embodied in
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`the doctrines of res judicata and collateral estoppel.’” Id. at 3.
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`IPR2017-01438 (Patent 8,821,517 B2)
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`Alternatively, Petitioner urges us to institute trial and asserts that we
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`should accept the claims “lack support, are not entitled to priority and are
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`invalid over the ’889 Publication.” Reply 1, 4.
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`B. Patent Owner’s Contentions
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`In its Preliminary Response, Patent Owner argues that institution
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`would be improper under 37 C.F.R. § 42.107(e) (“No post-grant review will
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`be instituted based on disclaimed claims”) because all claims of the ’517
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`patent have been disclaimed. Prelim. Resp. 4–5. Patent Owner asserts that
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`its statutory disclaimer of the challenged claims should not be construed as a
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`request for adverse judgment under 37 C.F.R. § 42.73(b), citing FCA US
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`LLC v. Jacobs Vehicle Systems, Inc., Case IPR2015–01234, slip op. at 3
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`(PTAB Oct. 23, 2015) (Paper 9) (“FCA”) (denying institution based on
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`Patent Owner’s statutory disclaimer filed before institution) and RPX Corp.
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`v. Cedatech Holdings LLC, Case IPR2015–00736, slip op. at 4 (PTAB Oct.
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`13, 2015) (Paper 11) (“RPX”), for the proposition that because trial has not
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`been instituted, 37 C.F.R. § 42.73(b)(2) does not apply. Prelim. Resp. 5–6.
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`Further, in its Sur-reply, Patent Owner contends that “[b]ecause
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`claims disclaimed by filing a statutory disclaimer during the preliminary
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`proceeding never existed as of the Decision to Institute, there is no statutory
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`or regulatory basis for instituting a trial. 37 C.F.R. §42.107(e).” Sur-reply 2.
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`See also id. at 1 (citing Guinn v. Kopf, 96 F. 3d 1419 (Fed. Cir. 1996)).
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`Patent Owner adds that there is no statutory or regulatory authority for the
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`Board to apply patentee estoppel to disclaimed claims or to grant equitable
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`relief. Id. at 3–4. Moreover, Patent Owner disputes Petitioner’s allegations
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`that Patent Owner copied Petitioner’s claims. Id. at 4–5; see Ex. 2001,6.
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`IPR2017-01438 (Patent 8,821,517 B2)
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`C. Analysis
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`1. Rule 42.73(b)(1)–(4)
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`Initially, we note that none of the Board decisions cited by the parties
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`have been designated as precedential, and, thus, none of those decisions are
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`binding in the instant proceeding. See PTAB Standard Operating Procedure
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`2 (Rev. 9), available at http://www.uspto.gov/patents-application-
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`process/patent-trial-and-appeal-board/resources. That being said, we have
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`considered those opinions to the extent they offer guidance on the issue
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`before us in this proceeding. Moreover, we note that, in its analysis, the
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`RPX panel considered whether the patent owner’s pre-institution statutory
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`disclaimer satisfied any of the four actions listed in 37 C.F.R. § 42.73(b)(1)–
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`(4). We begin with the same inquiry.
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`Rule 42.73(b) provides that a party may request adverse judgment
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`against itself at any time during a proceeding. Actions construed to be a
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`request for adverse judgment include:
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`(1) Disclaimer of the involved application or patent;
`(2) Cancellation or disclaimer of a claim such that the party
`has no remaining claim in the trial;
`(3) Concession of unpatentability or derivation of the contested
`subject matter; and
`(4) Abandonment of the contest.
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`37 C.F.R. § 42.73(b).
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`Here, Patent Owner has disclaimed the claims of the ’517 patent per
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`35 U.S.C. § 253(a) and filed the disclaimer form under 37 C.F.R. § 1.321(a)
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`stating “I hereby disclaim the following complete claims in the above
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`identified patent: Claims 1, 2, 3, 4, 5, 6, 7, and 8.” Ex. 2001, 7 (emphasis
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`added). In doing so, Patent Owner has explicitly disclaimed claims of the
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`’517 patent, which we determine makes Rule 42.73(b)(1) inapplicable.
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`IPR2017-01438 (Patent 8,821,517 B2)
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`In reaching this determination, we are not persuaded by Petitioner’s
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`argument that the disclaimer of all the claims in the ’517 patent is essentially
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`a disclaimer of the patent. First, the express language of §42.73(b)(1)
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`applies to a patent or application, and is not directed to claims of a patent.
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`Second, we agree with the reasoning in the RPX decision that discerns a
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`distinction between the filing of a disclaimer of claims under
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`35 U.S.C. § 253(a) and other types of disclaimers, including a disclaimer of
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`patent term through 35 U.S.C. § 253(b). Specifically, § 253(a) is directed to
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`the disclaimer of claims and provides that “[a] patentee, whether of the
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`whole or any sectional interest therein, may, on payment of the fee required
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`by law, make disclaimer of any complete claim, stating therein the extent of
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`his interest in such patent.” On the other hand, for example, § 253(b)
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`provides that “any patentee or applicant may disclaim or dedicate to the
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`public the entire term, or any terminal part of the term, of the patent granted
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`or to be granted.” Thus, at a minimum, we discern that § 253 contemplates a
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`difference between the disclaimer of claims and other types of disclaimers.
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`That being the case, our record reflects that Patent Owner explicitly filed a
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`statutory disclaimer of claims 1–8 of the ’517 patent. Ex. 2001. Thus, we
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`determine subsection (b)(1) does not apply.
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`Next, subsection (b)(2) of § 42.73 refers to “disclaimer of a claim
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`such that the party has no remaining claim in the trial” and applies only after
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`a trial has been instituted. Here, no trial has been instituted and, therefore,
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`there are no claims in a trial. On its face, 37 C.F.R. § 42.73(b)(2) does not
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`indicate that we can construe the relevant action by Patent Owner, i.e.,
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`disclaimer of challenged claims, as a request for adverse judgment before
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`institution of trial. See 37 C.F.R. § 42.2 (“Trial means a contested case
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`instituted by the Board based upon a petition. A trial begins with a written
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`IPR2017-01438 (Patent 8,821,517 B2)
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`decision notifying the petitioner and patent owner of the institution of the
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`trial.”). Thus, we determine that subsection (b)(2) is also inapplicable.
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`Further, Petitioner does not contend that Rule 42.73(b)(3) or (b)(4)
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`apply, and we agree that they do not. Accordingly, we also do not enter
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`adverse judgment based on subsections (b)(3)–(4).
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`2. Equitable Considerations
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`In addition to the above, even assuming, as Petitioner proposes, that
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`we have the discretion to enter adverse judgment based on equitable
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`considerations, we are not persuaded that the particular circumstances here
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`warrant this relief. First, Patent Owner disputes Petitioner’s allegations of
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`copying and violations of duty, and further responds with its own allegations
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`that Petitioner is the “copyist.” Sur-reply 4–5; Ex. 2001, 6 Thus, at best, the
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`record contains disputed and competing allegations that neither party has
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`admitted nor established with persuasive evidence. Sur-reply 4–5; Ex. 2001,
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`6 (Patent Owner states that the statutory disclaimer “does not constitute an
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`admission or acquiescence by Patentee in any way with regard to any
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`argument, evidence, assertion, or proposed Statement of Material Fact.”).
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`Second, on this record, we are not persuaded by Petitioner’s position
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`that the acts of filing disclaimers and continuation applications warrant
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`entering adverse judgment in this particular proceeding. Our rules allow
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`“patent owner . . . [to] file a statutory disclaimer under 35 U.S.C. 253(a) in
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`compliance with §1.321(a) of this chapter, disclaiming one or more claims in
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`the patent. No inter partes review will be instituted based on disclaimed
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`claims.” 37 C.F.R. § 42.107(e) (emphasis added). This encourages, among
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`other things, the efficient resolution of disputes early in the proceeding and
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`the conservation of limited Board resources. Further, on this record, we are
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`not persuaded that Patent Owner has engaged in any wrongdoing simply by
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`IPR2017-01438 (Patent 8,821,517 B2)
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`filing a statutory disclaimer as permitted by our rules, or in prosecuting its
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`patent applications.
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`3. Conclusion
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`In sum, all challenged claims of the ’517 patent have been disclaimed
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`per the statutory disclaimer (Ex. 2001) filed by the Patent Owner. Per our
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`rules, “[n]o inter partes review will be instituted based on disclaimed
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`claims.” 37 C.F.R. § 42.107(e).
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`Accordingly, we deny the Petition for inter partes review.
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`IV. MOTION TO DEEM FACTS ADMITTED
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`In its Motion, Petitioner seeks to have us deem certain “material” facts
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`presented in the Petition admitted by Patent Owner. Mot. 2–4. For the
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`reasons discussed above, the Petition has been denied. As such, there is no
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`inter partes review in which to consider whether these alleged facts may be
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`deemed admitted.1
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`Accordingly, we dismiss as moot Petitioner’s Motion to Deem Facts
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`Admitted.
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`1 To the extent Petitioner argues the facts at issue are relevant to our
`discussion regarding Patent Owner’s statutory disclaimer, we note that
`Patent Owner explicitly states in this record that the statutory disclaimer
`“does not constitute an admission or acquiescence by Patentee in any way
`with regard to any argument, evidence, assertion, or proposed Statement of
`Material Fact.” Ex. 2001, 6. Further, in this record, Patent Owner contests
`Petitioner’s allegations. See, e.g., Sur-reply 4–5.
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`IPR2017-01438 (Patent 8,821,517 B2)
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`V. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that no inter partes review is instituted; and
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`FURTHER ORDERED that the Motion to Deem Facts Admitted is
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`dismissed as moot.
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`PETITIONER:
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`Vincent McGeary
`Michael Cukor
`MCGEARY CUKOR LLC
`vmcgeary@mcgearycukor.com
`mcukor@mcgearycukor.com
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`PATENT OWNER:
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`Brad Pedersen
`Eric Chadwick
`PATTERSON THUENTE PEDERSEN, P.A.
`pedersen@ptslaw.com
`chadwick@ptslaw.com
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`9
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