Caterpillar Inc.v.ESCO Corporation

Patent Trial and Appeal BoardSep 23, 2015

13705691 (P.T.A.B. Sep. 23, 2015)

Trials@uspto.gov Paper 20 Tel: 571-272-7822 Entered: September 23, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CATERPILLAR INC., Petitioner, v. ESCO CORPORATION, Patent Owner. ____________ Case IPR2015˗00409 Patent 8,689,472 B2 ____________ Before PHILLIP J. KAUFFMAN, SCOTT A. DANIELS, and MITCHELL G. WEATHERLY, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. JUDGMENT AND FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b) IPR2015-00409 Patent 8,689,472 B2 BACKGROUND The Petition seeks inter partes review of claims 1–20 of U.S. Patent 8,689,472 B2 (Ex. 1001, “the ’472 patent”). Paper 2. Patent Owner filed a preliminary response. Paper 7. We granted the Petition and instituted inter partes review of claim 14. Paper 9. Petitioner requested rehearing. Paper 12. Patent Owner filed an opposition (Paper 13) and Petitioner field a reply (Paper 14). We declined to modify our decision. Paper 16. Patent Owner filed a notice seeking to “disclaim” claim 14 so that no patent would remain at issue in the proceeding and judgement could be entered. Paper 17. The Board held a conference call and indicated its preference for the disposition of claim 14 to be handled via the filing with the Office of a statutory disclaimer pursuant to 35 U.S.C. § 253 and 37 C.F.R. § 1.321. Paper 18. Patent Owner subsequently filed a notice indicating that it had disclaimed claim 14 pursuant to 35 U.S.C. § 253. Paper 19, Ex. 2053. DISCUSSION Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include disclaimer of a claim such that the party has no remaining claim in the trial. See 37 C.F.R. § 42.73(b)(2). Claim 14 of the ’472 patent is the only claim for which trial was instituted; Patent Owner has disclaimed claim 14, and consequently, Patent Owner has no remaining claim in this inter partes review. Under these circumstances, the entry of judgment adverse to the Patent Owner and termination of these proceedings is appropriate. 2 IPR2015-00409 Patent 8,689,472 B2 CONCLUSION AND ORDER It is, therefore, ORDERED that adverse judgment against the Patent Owner is entered and this proceeding is terminated under 37 C.F.R. § 42.73(b); and FURTHER ORDERED that this paper constitutes a final written decision under 35 U.S.C. § 318(a). 3 IPR2015-00409 Patent 8,689,472 B2 PETITIONER: Anthony M. Gutowski Daniel C. Cooley Alyssa J. Holtslander FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP tony.gutowski@finnegan.com daniel.cooley@finnegan.com alyssa.holtslander@finnegan.com PATENT OWNER: Charles W. Shifley Binal J. Patel Timothy J. Rechtien Robert H. Resis BANNER &WITCOFF, LTD. cshifley@bannerwitcoff.com bpatel@bannerwitcoff.com trechtien@bannerwitcoff.com rresis@bannrwitcoff.com 4

Caterpillar Inc. v. ESCO Corporation