Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: July 9, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`KAKADU R&D PTY LTD.
`AND KAKADU SOFTWARE PTY LTD.,
`Petitioner,
`v.
`INTOPIX S.A.,
`Patent Owner.
`
`IPR2021-00411
`Patent 9,332,258 B2
`
`
`
`
`
`
`
`
`
`Before DEBRA K. STEPHENS, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Not Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`
`
`
`571-272-7822
`
`Paper 7
`Date: July 9, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`KAKADU R&D PTY LTD.
`AND KAKADU SOFTWARE PTY LTD.,
`Petitioner,
`v.
`INTOPIX S.A.,
`Patent Owner.
`
`IPR2021-00411
`Patent 9,332,258 B2
`
`
`
`
`
`
`
`
`
`Before DEBRA K. STEPHENS, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Not Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`
`
`
`
`IPR2021-00411
`Patent 9,332,258 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Kakadu R&D Pty Ltd. and Kakadu Software Pty Ltd. (collectively,
`“Petitioner”) filed a petition (Paper 1, “Pet.”) to institute an inter partes
`review of claims 1–16 of U.S. Patent No. 9,332,258 B2 (Ex. 1001, “the ’258
`patent”). INTOPIX S.A. (“Patent Owner”) timely filed a Preliminary
`Response that includes Exhibit 2001, a copy of a disclaimer under 37 C.F.R.
`§ 1.321(a) filed by Patent Owner that disclaims all of the claims in the ’258
`patent. Paper 6 (“Prelim. Resp.”); Ex. 2001 (copy of disclaimer).
`For the reasons described below, based on the information presented,
`we do not institute an inter partes review of any claims.
`B. Related Proceedings
`The parties indicate that the ’258 patent is not involved in any current
`litigation. Pet. 95; Paper 4, 1–2.
`II. ANALYSIS
`According to Patent Owner, “Patent Owner has filed a statutory
`disclaimer with the United States Patent and Trademark Office, in
`connection with reissue application Serial No. 16/950,863, disclaiming
`claims 1–16 of the ’258 Patent pursuant to and in compliance with each of
`35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a).” Prelim. Resp. 1 (citing
`Ex. 2001). Patent Owner asserts that, because Patent Owner has disclaimed
`each and every claim challenged in the Petition, “the instant Petition is
`accordingly moot and no longer provides any basis for institution.” Id. at 2
`(citing 37 C.F.R. § 42.107(e)).
`Under 37 C.F.R. § 42.107(e), “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.” A disclaimer filed
`
`2
`
`
`
`IPR2021-00411
`Patent 9,332,258 B2
`under 35 U.S.C. § 253(a) will be “considered as part of the original patent”
`as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a);
`see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir.
`1998) (“This court has interpreted the term ‘considered as part of the
`original patent’ in section 253 to mean that the patent is treated as though the
`disclaimed claims never existed.”). For a disclaimer to be “recorded” in the
`Office, the document filed by the patent owner must:
`(1) Be signed by the patentee, or an attorney or agent of
`record;
`(2) Identify the patent and complete claim or claims, or
`term being disclaimed. A disclaimer which is not a disclaimer
`of a complete claim or claims, or term will be refused
`recordation;
`(3) State the present extent of patentee’s ownership
`interest in the patent; and
`(4) Be accompanied by the fee set forth in [37 C.F.R.]
`§ 1.20(d).
`37 C.F.R. § 1.321(a); see also Vectra, 162 F.3d at 1382 (holding that a § 253
`disclaimer is immediately “recorded” on the date that the Office receives a
`disclaimer meeting requirements of 37 C.F.R. § 1.321(a) and that no further
`action is required in the Office). A disclaimer filed during the prosecution
`of a reissue application, where the disclaimer disclaims one or more claims
`of the underlying patent sought to be reissued, will nonetheless be
`“recorded” in the Office so long as the above-listed requirements are
`satisfied. Finally, “[n]o inter partes review will be instituted based on
`disclaimed claims.” 37 C.F.R. § 42.107(e); see also General Electric Co. v.
`United Techs. Corp., IPR2017-00491, Paper 9, 3 (PTAB July 6, 2017)
`(precedential).
`
`3
`
`
`
`IPR2021-00411
`Patent 9,332,258 B2
`Based on our review of Exhibit 2001 and Office public records (that
`is, the USPTO Patent Application Information Retrieval (PAIR) database
`containing the image file wrappers and other information for both the ’258
`patent and its reissue application 16/950,863), we conclude that a disclaimer
`of claims 1–16 of the ’258 patent under 35 U.S.C. § 253(a) has been
`recorded in the Office as of April 26, 2021. As Patent Owner indicates, the
`disclaimer was filed by Patent Owner during the prosecution of reissue
`application 16/950,863, a reissue application seeking reissue of the
`underlying ’258 patent. Prelim. Resp. 1. The disclaimer was filed in both
`the ’258 patent file history and the 16/950,863 reissue application. Exhibit
`2001, a copy of the filed disclaimer, is signed by Gaël Rouvroy, CEO of
`INTOPIX S.A. Ex. 2001, 1. Exhibit 2001 also identifies the ’258 patent;
`identifies that all of the claims at issue in the Petition, claims 1–16, are
`disclaimed; and states that “INTOPIX S.A. is the owner of 100% of the
`instant patent by virtue of an assignment recorded at Reel 038007 and Frame
`0318.” Id. Lastly, the image file wrapper in PAIR for the 16/950,863
`reissue application includes a fee worksheet and receipt for the requisite fee
`filed with the disclaimer on April 26, 2021. See Ex. 3001.
`Because Patent Owner filed a statutory disclaimer in compliance with
`35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming all the claims of the
`’258 patent, no inter partes review is instituted in this proceeding.
`III. ORDER
`In consideration of the foregoing, it is hereby ORDERED that no inter
`partes review is instituted for any claim challenged by Petitioner.
`
`4
`
`
`
`IPR2021-00411
`Patent 9,332,258 B2
`For PETITIONER:
`
`Benjamin Haber
`O’MELVENY & MYERS LLP
`bhaber@omm.com
`
`Mark Yeh
`KPPB, LLP
`mark.yeh@kppb.com
`
`
`For PATENT OWNER:
`
`Timothy May
`Joshua Goldberg
`Wei Yuan
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`timothy.may@finnegan.com
`joshua.goldberg@finnegan.com
`wei.yuan@finnegan.com
`
`
`5
`
`
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