`571-272-7822
`
`Paper 10
`Date: January 11, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH
`ORGANISATION,
`Petitioner,
`v.
`BASF PLANT SCIENCE GMBH,
`Patent Owner.
`
`PGR2021-00004
`Patent 10,533,183 B2
`
`Before ULRIKE W. JENKS, JO-ANNE M. KOKOSKI, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`JUDGMENT
`Granting Request for Adverse Judgment
`After Institution of Trial
`37 C.F.R. § 42.73(b)
`
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`PGR2021-00004
`Patent 10,533,183 B2
`Commonwealth Scientific and Industrial Research Organisation
`(“Petitioner”) filed a Petition requesting post-grant review of claims 1–9 of
`U.S. Patent No. 10,533,183 B2 (Ex. 1001, “the ’183 patent”). Paper 1.
`BASF Plant Science GmbH (“Patent Owner”) did not file a Preliminary
`Response. We instituted a post-grant review as to all challenged claims on
`the grounds raised in the Petition on April 22, 2021. Paper 6. Pursuant to
`the Scheduling Order, Patent Owner was to file a response to the petition
`and/or a motion to amend the patent by July 16, 2021. Paper 7, 12. Instead,
`Patent Owner filed a Notice re: Statutory Disclaimer, informing the Board
`that it was “disclaiming all claims in the patent.” Paper 9, 1 (“Notice”).
`With its Notice, Patent Owner filed a copy of the Disclaimer in Patent Under
`37 C.F.R. § 1.321(a) that was submitted to the Office on July 16, 2021.
`Ex. 2001 (“Disclaimer”).
`Pursuant to our rules, “[a]ctions construed to be a request for adverse
`judgment include . . . [c]ancellation or disclaimer of a claim such that the
`party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Here,
`Patent Owner disclaimed claims 1–9 of the ’183 patent under 35 U.S.C.
`§ 253 according to the procedures set forth in 37 C.F.R. § 1.321(a). See
`Ex. 2001, 1. Accordingly, we construe Patent Owner’s Disclaimer as a
`request that the Board enter judgment against it with respect to claims 1–9,
`the only claims at issue in this trial, and we grant that request. See Unified
`Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27,
`2021) (construing statutory disclaimer of all challenged claims as a request
`for adverse judgment), aff’d Case No. 2021-01648, 2021 WL 5315423 (Fed.
`Cir. Nov. 16, 2021).
`
`2
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`
`
`PGR2021-00004
`Patent 10,533,183 B2
`
`ORDER
`
`It is hereby
`ORDERED that, pursuant to 37 C.F.R. § 42.73(b), adverse judgment
`is entered against Patent Owner with respect to claims 1–9 of U.S. Patent
`No. 10,533,183 B2.
`
`
`For PETITIONER:
`Gary J. Gershik
`John P. White
`COOPER & DUNHAM LLP
`ggershik@cooperdunham.com
`jwhite@cooperdunham.com
`
`For PATENT OWNER:
`Sandip H. Patel
`Mark H. Izraelewicz
`MARSHALL GERSTEIN & BORUN LLP
`spatel@marshallip.com
`mizraelewicz@marshallip.com
`
`
`
`3
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