`571-272-7822
`
`Paper 33
`Date: June 8, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ETHICON, INC.,
`Petitioner,
`v.
`BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
`Patent Owner.
`____________
`IPR2019-00407
`Patent 7,033,603 B2
`
`
`
`Before SUSAN L. C. MITCHELL, AVELYN M. ROSS,
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`MITCHELL, Administrative Patent Judge.
`
`
`JUDGMENT
`Request for Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`IPR2019-00407
`Patent 7,033,603 B2
`
`
`Ethicon, Inc. (“Petitioner”) filed a Petition (“Pet.”) to institute an inter
`partes review of claims 1, 2, 6, 11, 13, and 19 of U.S. Patent No. 7,033,603
`B2 (Ex. 1001, “the ’603 patent”). Paper 1. The Board of Regents, The
`University of Texas System (“Patent Owner”) did not file a preliminary
`response to the Petition.
`On June 10, 2020, we instituted trial as to all challenged claims.
`Paper 29. Patent Owner filed a Patent Owner Response stating that on
`September 2, 2020, Patent Owner filed a statutory disclaimer in the Office
`disclaiming all challenged claims of the ’603 patent. Paper 31, 3. Patent
`Owner notes that no challenged claim remains in this proceeding, and
`requests termination of the proceeding. Id. at 4. Patent Owner concludes
`that “[p]ursuant to 37 C.F.R. § 42.73(b)(2), Patent Owner respectfully
`requests the Board terminate IPR2019-00407 and enter judgment in the
`IPR.” Id. at 5.
`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 Patent Owner has explicitly requested adverse judgment against
`itself pursuant to Rule 42.73(b)(2), and has statutorily disclaimed all claims
`in the ’603 patent that were challenged in this proceeding, Patent Owner’s
`request for adverse judgment is granted.
`
`
`2
`
`
`
`IPR2019-00407
`Patent 7,033,603 B2
`
`Accordingly, it is hereby:
`ORDERED that judgment is herein entered against Patent Owner with
`respect to claims 1, 2, 6, 11, 13, and 19 of the ’603 patent;
`FURTHER ORDERED that the instant proceeding is terminated; and
`FURTHER ORDERED that claims 1, 2, 6, 11, 13, and 19 of the ’603
`patent are herein cancelled.
`
`
`
`
`
`3
`
`
`
`IPR2019-00407
`Patent 7,033,603 B2
`
`FOR PETITIONER:
`
`Jeffrey S. Ginsberg
`Andrew D. Cohen
`Gregory L. Diskant
`Eugene M. Gelernter
`Patterson Belknap
`PATTERSON BELKNAP WEBB & TYLER LLP
`jginsberg@pbwt.com
`acohen@pbwt.com
`UTexasIPRs@pbwt.com
`
`
`
`FOR PATENT OWNER:
`
`Stephen R. Finch
`Ross K. Krutsinger
`FINCH & MALONEY, PLLC
`sfinch@finchmaloney.com
`rkrutsinger@finchmaloney.com
`
`
`
`4
`
`
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