BASF Plant Science GmbH

Patent Trials and Appeals Board

Jan 11, 2022

PGR2021-00004 (P.T.A.B. Jan. 11, 2022)

Trials@uspto.gov Paper 10 571-272-7822 Date: January 11, 2022 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) PGR2021-00004 Patent 10,533,183 B2 2 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). PGR2021-00004 Patent 10,533,183 B2 3 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