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`This application is officis:
`Description. fe Dawnioad and Print: Check the desired decir
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`desired
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`Available Documents
`Mail Room Date?
`Boocument Coded
`Document Description Ot
`01-26-2023
`STATDISCLMR
`01-26-2023
`WFEE
`
`0152652023
`NAIT
`
`12-22-2022
`SOL.NTC.SUIT
`
`T2-24-2022
`TRIALLREG.G
`
`10-08-2022
`STAT.DISCLMR
`
`10-08-2022
`NATIT
`
`
`STAT.DISCLMR
`
`WFEE
`
`
`
`10-05-2022
`09-08-2022
`09-08-2022
`09-07-2022
`09-07-2022
`09-07-2022
`09-07-2022
`
`LEP.
`N417
`LET.
`N417
`LET.
`N417
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`Statutory Disclaimerfiled on 1-26-2023 wasfiled in duress due to the PTAB
`violation of precedent IPR2017-00491 and the law of 37 C.F.R. § 42.107(e)
`
`/swilliam grecia/ inventor and principle of WGP LLC
`
`
`
`‘Trials@uspto.gov
`Tel: 571-272-7822
`
`Designated: 09/09/2019
`
`Patent Trial and Appeal Board
`SRECEDENTIAL
`Standard 0 erating Procedure2
`
`Paper9
`Entered:July 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`V.
`
`UNITED TECHNOLOGIES CORPORATION
`AND MTU AERO ENGINESAG,
`Patent Owner.
`
`
`Case IPR2017-00491
`Patent 8,517,668 Bl
`
`Before HYUN J. JUNG, MITCHELL G. WEATHERLY, and
`GEORGER. HOSKINS, Administrative Patent Judges.
`
`WEATHERLY,Administrative Patent Judge.
`
`DECISION
`Not Instituting /nter Partes Review
`3S USC. $314, 37 CER. $$ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`
`General Electric Company (“GE”)filed a petition (Paper 1, “Pet.”) to
`
`institute an inter partes review of claims 1-17 of U.S. Patent No. 8,517,668
`
`B1 (Ex. 1001, “the °668 patent”). 35 U.S.C. § 311. United Technologies
`
`
`
`IPR2017-00491
`Patent 8,517,668 Bl
`
`Corporation and MTU Aero Engines AG (collectively “Patent Owner’)
`
`timely filed a Preliminary Response. Paper 8 (Prelim. Resp.”). Institution
`
`of an inter partes review 1s authorized by statute when “the information
`
`presented in the petition filed under section 311 and any responsefiled under
`
`section 313 showsthat there 1s a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108.
`
`For the reasons described below, we decline to institute an inter partes
`
`review of any claims.
`
`B. RELATED PROCEEDINGS
`
`The parties indicate that the ’668 patentis related to a patent that was
`
`at issue in Case IPR2016-00857, in which institution of inter partes review
`
`was denied. Pet. 1; Prelim. Resp. 1; Paper 4, 1. The parties also indicate
`
`that the ’668 patent is not involvedin litigation. Pet. 2; Paper 4, 2.
`
`II. ANALYSIS
`
`Patent Ownerstatesthat it “strongly disagree[s] with Petitioner’s
`
`unpatentability contentions.” Prelim. Resp. 1. Nevertheless, United
`
`Technologies Corporation and MTU Aero Engines AG and MTU Aero
`
`Engines AG haveeachfiled a statutory disclaimer of claims 1—17 of the
`
`°668 patent. Ex. 2001 (for United Technologies Corporation and MTU Aero
`
`Engines AG); Ex. 2002 (for MTU Aero Engines AG).
`
`Under 37 C.F.R. § 42.107(e), “patent owner mayfile 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” and “[n]o inter partes
`
`review will be instituted based on disclaimed claims.” A disclaimer under
`
`35 U.S.C. § 253(a) is “considered as part of the original patent” as of the
`
`
`
`IPR2017-00491
`Patent 8,517,668 Bl
`
`date on which it is “recorded”in the Office. 35 U.S.C. § 253(a). Fora
`
`disclaimer to be “recorded”in the Office, the documentfiled 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 whichis 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 CER. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
`
`1379, 1382 (Fed. Cir. 1998) (holding that § 253 disclaimer is immediately
`
`“recorded” on date that Office receives disclaimer meeting requirements of
`
`37 C.F.R. § 1.321(a) and that no further action is required in the Office).
`
`Based on our review of Exhibits 2001 and 2002 and Office public
`
`records, we concludethat a disclaimer of claims 1—17 of the ’668 patent
`
`under 35 U.S.C. § 253(a) has been recorded in the Office as of April 12,
`
`2017. Ex. 2001; Ex. 2002. Because all claims challenged by GE have been
`
`disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R.
`
`§ 1.321(a), no inter partes review is instituted in this proceeding. 37 C.F.R.
`
`§ 42.107(e).
`
`IN. ORDER
`
`For the reasons given, it is ORDEREDthat no inter partes review is
`
`instituted for any claim challenged by GE.
`
`
`
`IPR2017-00491
`Patent 8,517,668 Bl
`
`PETITIONER:
`
`Anish Desai
`Brian Ferguson
`Christopher Pepe
`WEIL GOTSHAL & MANGESLLP
`anish.desai@weil.com
`brian.ferguson@weil.com
`christopher.pepe@weil.com
`GE.WGM.Service@weil.com
`
`PATENT OWNER:
`
`M. Andrew Holtman
`C. Brandon Rash
`Alyssa J. Holtslander
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNERL.L.P.
`andy.holtman@finnegan.com
`brandon.rash@finnegan.com
`alyssa.holtslander@finnegan.com
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 24
`Entered: October 19, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EARLY WARNINGSERVICES, LLC,
`
`Petitioner,
`
`V.
`
`WEPAY GLOBAL PAYMENTS LLC,
`
`Patent Owner.
`
`PGR2022-0003 1
`Patent D930,702 S
`
`Before GRACE KARAFFA OBERMANN,SCOTT A. DANIELS, and
`MITCHELL G. WEATHERLY,Administrative Patent Judges.
`
`Per curiam.
`
`ORDER
`Conduct of the Proceeding
`37 CER. § 42.5
`
`
`
`PGR2022-0003 1
`Patent D930,702 S
`
`On October 7, 2022, based on information presented in the Petition
`
`(Paper 1), Preliminary Response (Paper 9), Reply (Paper 16), and Sur-reply
`
`(Paper 17), the Board entered a Decision (Paper 22) instituting a post-grant
`
`review based on the grounds advancedin the Petition. The Decision is based
`
`on information properly filed in those briefs under signature of counsel—
`
`namely, persons authorized to participate in our forum and bound to abide
`
`by the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37,
`
`Code of Federal Regulations, the Patent Trial and Appeal Board’s
`
`Consolidated Trial Practice Guide (November 2019),' and Part 11 of
`
`Title 37, Code of Federal Regulations (collectively, “the Board’s governing
`
`principles”).
`
`On October 7, 2022, beginning approximately two hoursafter entry of
`
`the Decision, the Board began receiving emails from “Lizzette Grecia,” who
`
`purports an affiliation with Patent Owner, butis not identified by Patent
`
`Owneras counsel. See Ex. 3002 (emails from Lizzette Grecia); see also
`
`Paper 6 (Patent Owner’s mandatory notices, including identification of
`
`counsel). The Board shall not consider in this proceeding any information
`
`submitted by an individual under no duty to comply with the Board’s
`
`governing principles. Only counsel of record may submit arguments and
`
`evidence to the Board, and only in briefs permitted by our rules or otherwise
`
`authorized by order of the Board.
`
`The Board has the authority to issue orders managing a party’s
`
`behavior under 37 C.F.R. § 42.5(a). Pursuant to that authority, we advise
`
`both parties that the submission of arguments or evidence to the Board by
`
`' Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`PGR2022-0003 1
`Patent D930,702 S
`
`email is prohibited. Patent Owner shall cease and desist from transmitting
`
`information to the Board by email or otherwise from Lizzette Grecia or any
`
`other representative of Patent Owner other than counsel of record. See
`
`Paper 6 (identifying counsel). Any future communications in violation of
`
`this order may result in an order to show cause whysanctions should not be
`
`levied against the offending party. Any emails from counsel for either party
`
`to the Board shall not include arguments or evidence.
`
`It is
`
`ORDEREDthat the submission of arguments or evidence to the Board
`
`by email is prohibited;
`
`FURTHER ORDEREDthat Patent Ownershall cease and desist from
`
`transmitting information to the Board by email or otherwise from Lizzette
`
`Grecia or any other representative of Patent Owner other than its counsel of
`
`record; and
`
`FURTHER ORDEREDthat any emails from counsel for either party
`
`to the Board shall not include arguments or evidence.
`
`
`
`PGR2022-0003 1
`Patent D930,702 S
`
`For PETITIONER:
`
`Justin Krieger
`Darin Gibby
`Michael Bertelson
`KILPATRICK TOWNSEND & STOCKTON LLP
`jkrieger@kilpatricktownsend.com
`dgibby@kilpatricktownsend.com
`mbertelson@kilpatricktownsend.com
`
`For PATENT OWNER:
`
`Henry Ohanian
`OHANIANIP
`artoush@ohanian-iplaw.com
`
`John Biggers
`BIGGERS LAW
`john@biggerslaw.com
`
`
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