`Trials@uspto.gov
`Date: August 31, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PARHELION, INC.,
`Petitioner,
`v.
`STREAMLIGHT, INC.,
`Patent Owner.
`
`PGR2020-00062
`Patent 10,378,702
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, WESLEY B. DERRICK, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`DERRICK, Administrative Patent Judge.
`
`JUDGMENT
`Granting Request for Adverse Judgment Prior to Institution of Trial
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`
`PGR2020-00062
`Patent 10,378,702 B2
`Petitioner, Parhelion, Inc., filed a Petition for Post Grant Review of
`claims 1, 2, 5, 6, 8, 10–12, 15, 16, 18, 20–24, 26–28, and 31 of U.S. Patent
`No. 10,378,702 B2 (“the ’702 patent”). Paper 1 (“Pet.”).
`On August 13, 2020, following authorization by the Board, Patent
`Owner, Streamlight, Inc., filed an “Unopposed Request for Entry of Adverse
`Judgment Under 37 C.F.R. § 42.73(b)(2).” Paper 5 (“Request”). Patent
`Owner represents that “Petitioner . . . does not oppose [Patent Owner’s]
`request for [adverse] judgement.” Id. Patent Owner cites “business
`considerations,” and “requests judgment against itself under 37 C.F.R.
`§ 42.73(b)(2), and asks that the Board cancel claims 1, 2, 5, 6, 8, 10, 11, 12,
`15, 16, 18, 20, 21, 22, 23, 24, 26, 27, 28, and 31 of the ’702 Patent.” Id.
`Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment
`against itself at any time during a proceeding. Cancellation or disclaimer of
`one or more claims such that the patent owner has no remaining claim in the
`trial suffices as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2).
`The Board is permitted to enter adverse judgment at any time in a
`proceeding, including prior to an institution decision. Cf. Arthrex, Inc. v.
`Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018) (“37 C.F.R.
`§ 42.73(b) permits the Board to enter an adverse judgment when a patent
`owner cancels all claims at issue after an IPR petition has been filed, but
`before an institution decision.”).
`As claims 1, 2, 5, 6, 8, 10–12, 15, 16, 18, 20–24, 26–28, and 31 of the
`’702 patent are the only claims challenged in this case, and Patent Owner
`requests their cancellation, Patent Owner will have no remaining claims in
`this case upon the requested cancellation. Under the circumstances of this
`case, we determine that the grant of Patent Owner’s Unopposed Request for
`
`2
`
`
`
`PGR2020-00062
`Patent 10,378,702 B2
`Adverse Judgment is appropriate. Thus, we grant the request for adverse
`judgment pursuant to 37 C.F.R. § 42.73(b).
`
`Accordingly, it is
`ORDERED that adverse judgment is entered against Patent Owner
`pursuant to 37 C.F.R. § 42.73;
`FURTHER ORDERED that claims 1, 2, 5, 6, 8, 10–12, 15, 16, 18,
`20–24, 26–28, and 31 of the ’702 patent are cancelled; and
`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(d)(3),
`Patent Owner is precluded from taking any action inconsistent with this
`judgment, including obtaining any patent claim that is not patentably distinct
`from a cancelled claim in this proceeding.
`
`
`3
`
`
`
`PGR2020-00062
`Patent 10,378,702 B2
`FOR PETITIONER:
`
`Clinton Brannon
`cbrannon@williamsmullen.com
`
`Richard Matthews
`rmatthews@williamsmullen.com
`
`FOR PATENT OWNER:
`Roger Herrell
`rherrell@ddhs.com
`
`Niels Haun
`nhaun@ddhs.com
`
`Clement Berard
`cberard@ddhs.com
`
`
`
`4
`
`
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