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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KAKADU R&D PTY LTD. AND KAKADU SOFTWARE PTY LTD.,
`Petitioner,
`v.
`INTOPIX S.A.,
`Patent Owner.
`
`IPR2021-00411
`Patent No. 9,332,258
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
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`Case No. IPR2021-00411
`Patent No. 9,332,258
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`LIST OF EXHIBITS
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`Exhibit No.
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`2001
`
`Description
`Disclaimer of Claims 1–16 in U.S. Patent No. 9,332,258
`Under 37 C.F.R. § 1.321(a), Filed in Reissue Application
`Serial No. 16/950,863.
`
`i
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`
`
`Case No. IPR2021-00411
`Patent No. 9,332,258
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner INTOPIX S.A. (“Patent
`
`Owner”) submits this Patent Owner Preliminary Response to the Petition
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`(IPR2021-00411) challenging claims 1–16 of U.S. Patent No. 9,332,258 (“the
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`’258 Patent”). See, e.g., Petition at 1.
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`Patent Owner has filed a statutory disclaimer with the United States Patent
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`and Trademark Office, in connection with reissue application Serial No.
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`16/950,863, disclaiming claims 1–16 of the ’258 Patent pursuant to and in
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`compliance with each of 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). See Ex.
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`2001. These claims are the only claims challenged in the Petition. See, e.g.,
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`Petition at 1. Thus, the Petition is now moot and the Board should deny institution
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`of further proceedings.
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`37 C.F.R. § 42.107(e) provides: “[t]he patent owner may file a statutory
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`disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter,
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`disclaiming one or more claims in the patent. No inter partes review will be
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`instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). Indeed, the Board
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`routinely denies institution of inter partes review under 37 C.F.R. § 47.107(e)
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`when the patent owner has disclaimed each of the challenged claims. See, e.g.,
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`Matsing, Inc. v. CommScope Techs. LLC, IPR2020-01326, Paper 6 (P.T.A.B.
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`January 8, 2021) (denying petition and not instituting IPR when all challenged
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`claims were disclaimed under 35 U.S.C. § 253(a)); Fitbit, Inc. v. Philips North
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`1
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`
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`Case No. IPR2021-00411
`Patent No. 9,332,258
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`America LLC, IPR2020-00782, Paper 7 (P.T.A.B. October 30, 2020) (same);
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`Garmin Int’l, Inc. v. Philips North America LLC, IPR2020-00909, Paper 9
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`(P.T.A.B. October 30, 2020) (same); General Electric Co. v. United Techs. Corp.,
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`IPR2017-00491, Paper 9 (P.T.A.B. July 6, 2017) (precedential) (same).
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`Here, Patent Owner has disclaimed each and every claim challenged in the
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`Petition, pursuant to and in compliance with each of 35 U.S.C. § 253(a) and 37
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`C.F.R. § 1.321(a). Because the Board treats these disclaimed claims as though they
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`never existed in the first instance, the instant Petition is accordingly moot and no
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`longer provides any basis for institution. 37 C.F.R. § 42.107(e). Accordingly, as
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`was done in Matsing, the Board should issue a decision under 35 U.S.C. § 314 and
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`37 C.F.R. 42.107(e), ordering “that the Petition is denied and no inter partes
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`review is instituted.” IPR2020-01326, Paper 6; see also IPR2020-00782, Paper 7;
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`IPR2020-00909, Paper 9; IPR2017-00491, Paper 9.
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`Dated: April 26, 2021
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`Respectfully submitted,
`
`
`/Timothy J. May/
`Timothy J. May, Reg. No. 41,538
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`
`Lead Counsel for Patent Owner
`INTOPIX S.A.
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`2
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`Case No. IPR2021-00411
`Patent No. 9,332,258
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`CERTIFICATE OF COMPLIANCE
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`The undersigned hereby certifies that the foregoing Patent Owner
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`Preliminary Response Pursuant to 37 C.F.R. § 42.107 contains 456 words,
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`excluding those portions identified in 37 C.F.R. § 42.24(a), as measured by the
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`word-processing system used to prepare this paper.
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`
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`Dated: April 26, 2021
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`/Timothy J. May/
`Timothy J. May, Reg. No. 41,538
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`Case No. IPR2021-00411
`Patent No. 9,332,258
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Patent Owner
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`
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`
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`Preliminary Response Pursuant to 37 C.F.R. § 42.107 and Exhibit 2001 were
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`served electronically via email on April 26, 2021, in their entirety on the following:
`
`Benjamin M. Haber
`O’MELVENY & MYERS LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`bhaber@omm.com
`OMMKAKADUIPR@omm.com
`
`
`David J. Bailey
`Mark Y. Yeh
`KPPB, LLP
`2190 South Towne Centre Place,
`Suite 300
`Anaheim, CA 92806
`david.bailey@kppb.com
`mark.yeh@kppb.com
`litigation@kppb.com
`
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`Petitioner has consented to service by electronic mail.
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`Dated: April 26, 2021
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`
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`
`/William Esper/
`William Esper
`Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
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