`Tel: 571-272-7822
`Entered: November 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`FITBIT, INC.
`Petitioner,
`
`v.
`
`SMART WEARABLE TECHNOLOGIES INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-00252
`Patent 6,997,882 B1
`_______________
`
`
`Before PATRICK R. SCANLON and ZHENYU YANG,
`Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Denying Patent Owner’s Request for Adverse Judgment without Prejudice
`37 C.F.R. § 42.73 (b)
`
`
`
`
`
`IPR2018-00252
`Patent 6,997,882 B1
`
`
`
`
`INTRODUCTION
`Fitbit, Inc. filed a Petition, requesting an inter partes review of claims
`8–10 of U.S. Patent No. 6,997,882 B1. Paper 2. After we instituted the
`review (see Paper 7), Smart Wearable Technologies Inc. (“Patent Owner”)
`filed a Disclaimer of Challenged Claims, which we construe as a request for
`adverse judgment. Paper 11. The request, in its entirety, reads as follows:
`“Pursuant to 37 C.F.R. § 42.73(b)(2), Patent Owner Smart Wearable
`Technologies Inc. hereby disclaims claims 8 – 10 of U.S. Patent No.
`6,997,882. No claims remain at issue for trial. Patent Owner requests entry
`of adverse judgment in IPR2018-00252.” Id. We deny Patent Owner’s
`request for adverse judgment without prejudice.
`“A party may request 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 “disclaimer of a claim such that the party has no
`remaining claim in the trial.” Id. § 42.73(b)(2). In an inter partes review,
`“[t]he 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.” Id. § 42.107(e). Under the statute,
`A patentee, whether of the whole or any sectional interest therein,
`may, on payment of the fee required by law, make disclaimer of
`any complete claim, stating therein the extent of his interest in
`such patent. Such disclaimer shall be in writing, and recorded in
`the Patent and Trademark Office; and it shall thereafter be
`considered as part of the original patent to the extent of the
`interest possessed by the disclaimant and by those claiming
`under him.
`35 U.S.C. § 253(a).
`
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`
`
`
`
`IPR2018-00252
`Patent 6,997,882 B1
`
`
`
`
`In the request, Patent Owner has not shown that it has complied with
`35 U.S.C. § 253(a) or 37 C.F.R. § 1.321(a). Thus, we deny Patent Owner’s
`request for adverse judgment. Patent Owner may, if it so wishes, file a
`renewed request for adverse judgment after filing a proper statutory
`disclaimer with the Office. Patent Owner is reminded that the Board does
`not process such statutory disclaimer.
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s request for adverse judgment is
`denied without prejudice; and
`FURTHER ORDERED that Patent Owner is authorized to file a
`renewed request for adverse judgment after filing a proper statutory
`disclaimer in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a).
`
`
`
`PETITIONER:
`Harper Batts
`Christopher Ponder
`hbatts@sheppardmullin.com
`cponder@sheppardmullin.com
`Jeremy Taylor
`Baker Botts L.L.P.
`jeremy.taylor@bakerbotts.com
`
`PATENT OWNER:
`Richard Wojcio
`Friedman, Suder & Cooke
`wojcio@fsclaw.com
`
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