`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 9
`Entered: March 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC. and AUGUST HOME, INC.,
`Petitioner,
`
`v.
`
`MARK W. KILBOURNE,
`Patent Owner.
`____________
`
`Case IPR2019-00233
`Patent 7,373,795 B2
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, RICHARD H. MARSCHALL, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5 & 42.107(e)
`
`
`
`
`
`
`
`IPR2019-00233
`Patent 7,373,795 B2
`
`
`Apple Inc. and August Home, Inc. (collectively, “Petitioner”) have
`filed a Petition (Paper 3, “Pet.”) to institute an inter partes review of
`claims 11–20 of U.S. Patent No. 7,373,795 B2 (“the ’795 patent”). See
`Pet. 7–8. As pertinent to this Order, the Petition asserts claims 18–20 are
`unpatentable under 35 U.S.C. § 103 based on two patents and one published
`patent application. See id. at 8, 57–70.
`Mark W. Kilbourne (“Patent Owner”), the solely named inventor and
`the owner of the ’795 patent, has filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”). Patent Owner’s only response to the Petition’s challenge
`of unpatentability in relation to claims 18–20 is as follows:
`Pursuant to a disclaimer filed prior to the filing of this response,
`Patentee has disclaimed claims 18–20. See Exhibit 2002. As
`such, this response addresses only independent claim 11 and
`claims 12–17 (which depend from claim 11). See 37 C.F.R.
`§ 42.107(e) (“No inter partes review will be instituted based on
`disclaimed claims.[”])[.]
`Prelim. Resp. 18.
`We have reviewed Exhibit 2002. It is a document captioned
`“DISCLAIMER OF CLAIMS 18, 19 AND 20 FOR U.S. PATENT
`No. 7,373,795.” Ex. 2002. The document pertinently states: (a) Patent
`Owner is “the sole owner of” the ’795 patent; (b) Patent Owner “hereby
`disclaim[s] claims 18, 19 and 20” of the ’795 patent; and (c) attached is “a
`USPTO payment form for $160. to pay the fee for this action.” Id. The
`document bears a typewritten date of February 13, 2019, and Patent Owner’s
`signature followed by the handwritten date of February 14, 2019. Id. The
`Preliminary Response in this proceeding was filed on February 14, 2019.
`However, Exhibit 2002 does not bear any indicia of the document
`having been filed with the Office in any fashion other than as an Exhibit in
`
`2
`
`
`
`IPR2019-00233
`Patent 7,373,795 B2
`
`this proceeding. There also is no payment form attached to the document,
`despite statement (c) in the document. Further, the Office’s Public Patent
`Application Information Retrieval (PAIR) database records relating to the
`’795 patent do not reflect the filing of the disclaimer provided in
`Exhibit 2002 as part of the official prosecution history record of the
`’795 patent.
`Based on the foregoing, we conclude Patent Owner has not, in fact,
`disclaimed claims 18–20, despite having stated it was Patent Owner’s
`intention to have done so “prior to the filing of” the Preliminary Response.
`See Prelim. Resp. 18. Our Rules direct the Patent Owner to “file a statutory
`disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this
`chapter.” 37 C.F.R. § 42.107(e) (emphases added). That is, Patent Owner
`must file the disclaimer as part of the prosecution history record of the
`’795 patent, for example using the Office’s EFS-Web electronic filing
`system, so that the disclaimer is included in the PAIR database records
`relating to the ’795 patent. This method of filing permits the disclaimer to
`be reviewed by the appropriate personnel for statutory and regulatory
`compliance. Id.; see also MPEP § 1490(IV)(A)–(D) (the Certificates of
`Correction Branch of the Office, not the Patent Trial and Appeal Board,
`determines whether a filed statutory disclaimer complies with 35 U.S.C.
`§ 253(a) and with 37 C.F.R. § 1.321, and takes appropriate action).
`In consideration of the foregoing, it is hereby:
`ORDERED that, on or before April 5, 2019, Patent Owner shall take
`one of the following actions:
`(1)
`file a statutory disclaimer of claims 18–20 of the
`’795 patent as part of the prosecution history record of
`
`3
`
`
`
`IPR2019-00233
`Patent 7,373,795 B2
`
`
`(2)
`
`(3)
`
`the ’795 patent, and then file a Paper in the present
`proceeding attaching the prosecution history filing as an
`Exhibit thereto; or
`file a Paper in the present proceeding indicating that
`Patent Owner does not desire to disclaim claims 18–20 of
`the ’795 patent; or
`confer with Petitioner’s counsel to determine when
`counsel for both parties are available during the week of
`April 8–12, 2019, to participate in a telephone conference
`with the Board to discuss the status of claims 18–20 of
`the ’795 patent.
`
`PETITIONER:
`
`Joseph A. Hynds
`Jennifer P. Nock
`Eric D. Blatt
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`jhynds@rfem.com
`jnock@rfem.com
`eblatt@rfem.com
`litigationparalegals@rothwellfigg.com.
`
`
`PATENT OWNER:
`
`Robert J. McAughan, Jr.
`Christopher M. Lonvick
`YETTER COLEMAN LLP
`bmcaughan@yettercoleman.com
`clonvick@yettercoleman.com
`
`4
`
`
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