`Tel: 571-272-7822
`
`
`
`
`Paper No. 74
`Entered: February 6, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`FG SRC LLC,1
`Patent Owner.
`____________
`
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1) 2
`____________
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 Patent Owner filed updated mandatory notice information indicating that
`the challenged patents were assigned to FG SRC LLC. IPR2019-01599,
`Paper 72; IPR2018-01600, Paper 72. Accordingly, the captions for these
`proceedings have been changed.
`2 This Order addresses an issue pertaining to all the above-captioned cases.
`Therefore, we exercise our discretion to issue a single Order to be filed in
`each case. The parties are not authorized to use this style of heading.
`
`
`
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`
`
`In the Patent Owner Response for each of the above-captioned
`proceedings, Patent Owner states that it “surrenders” some, but not all,
`claims challenged in each respective proceeding. Patent Owner “surrenders”
`claims 1–7 of U.S. Patent 6,076,152 (“the ’152 patent”) and claims 1–7 of
`U.S. Patent 6,247,110 B1 (“the ’110 patent”). IPR2018-01599, Paper 37, 4;
`IPR2018-01600, Paper 37, 4 (“Patent Owner hereby surrenders challenged
`claims 1–7 of the ’152 Patent and challenged claims 1–7 of the ’110
`Patent.”).
`At the consolidated hearing for the above-captioned IPRs, which took
`place on February 3, 2020, Patent Owner confirmed that it intends to
`disclaim the above-identified claims, and Petitioner confirmed it has no
`objection to disclaimer of the claims. Subsequent to the hearing, on
`February 4, 2020, the parties agreed to Patent Owner’s proposal that Patent
`Owner file a statutory disclaimer disclaiming the above-identified claims.
`Patent Owner stated that it could file the appropriate documents within 10
`business days.
`In consideration of the foregoing, Patent Owner is hereby ordered to
`either file statutory disclaimers of the above-identified claims, pursuant to
`35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a), as discussed, or notify the
`Board that it will not do so, within 10 business days of entry of this Order.
`
`Accordingly, it is hereby
`ORDERED that Patent Owner either file statutory disclaimers,
`pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a), of claims 1–7 of
`U.S. Patent 6,076,152 and claims 1–7 of U.S. Patent 6,247,110 B1 as
`discussed, or notify the Board that it will not do so, within 10 business days
`
`2
`
`
`
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`
`of entry of this Order.
`
`
`
`
`
`
`
`
`
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`
`
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`
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`
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`
`
`3
`
`
`
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`
`PETITIONER:
`Joseph A. Micallef
`Scott M. Border
`Jason P. Greenhut
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`sborder@sidley.com
`jgreenhut@sidley.com
`
`
`
`PATENT OWNER:
`Alfonso Chan
`Joseph DePumpo
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`jdepumpo@shorechan.com
`
`Sean Hsu
`Rajkumar Vinnakota
`G. Donald Puckett
`JANIK VINNAKOTA LLP
`shsu@jvllp.com
`kvinnakota@jvllp.com
`dpuckett@jvllp.com
`
`4
`
`
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