Global Tel*Link Corporationv.Howlink Global LLCDownload PDFPatent Trial and Appeal BoardAug 15, 201412969068 (P.T.A.B. Aug. 15, 2014) Copy Citation Trials@uspto.gov Paper 9 571-272-7822 Entered: August 15, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GLOBAL TEL*LINK CORPORATION, Petitioner, v. HOWLINK GLOBAL LLC, Patent Owner. ____________ Case IPR2014-00696 Patent 8,477,766 B2 __________ Before WILLIAM A. CAPP, BARBARA A. BENOIT, and JAMES B. ARPIN, Administrative Patent Judges. CAPP, Administrative Patent Judge. JUDGMENT Terminating the Proceeding 37 C.F.R. §§ 42.73, 42.107 IPR2014-00696 Patent 8,477,766 B2 2 Global Tel*Link Corporation (“Global”) filed a Petition (Paper 1) requesting inter partes review of claims 1–34 of U.S. Patent No. 8,477,766 B2 (Ex. 1001, “the ’766 Patent”). Howlink Global LLC (“Howlink”) filed a Patent Owner Preliminary Response. (Paper 6, “Prelim. Resp.”). In the Preliminary Response, Howlink states that it filed a statutory disclaimer under 35 U.S.C. § 253(a), disclaiming claims 1–34 of the ’766 Patent pursuant to 37 C.F.R. § 1.321. Prelim. Resp. 1. Contemporaneously with the filing of the Preliminary Response, Howlink filed a copy of its Disclaimer. Ex. 2001 (the “Disclaimer”).1 We ordered Howlink to file a statement clarifying the extent of its interest in the ’766 Patent as of the effective date of the Disclaimer. Paper 7. Pursuant to our Order, Howlink filed a statement representing that, at the time of the Disclaimer, it owned the entire right, title, and interest in the ’766 Patent. Paper 8. Under 35 U.S.C. § 253(a), a patentee may disclaim any claim. This applies to the extent of a patentee’s ownership interest in the claim, whether of the whole or any sectional interest therein. Id. Under 37 C.F.R. § 42.107(e), a Patent Owner can file a Preliminary Response that includes a statutory disclaimer under 35 U.S.C. § 253(a). Rule 107(e) states that no inter partes review will be instituted based on disclaimed claims. Inasmuch as Howlink has disclaimed each and every 1 Howlink initially filed the Disclaimer as Exhibit 1010. In accordance with our rules, the Exhibit has been administratively renumbered as Exhibit 2001. 37 C.F.R. § 42.63(c). IPR2014-00696 Patent 8,477,766 B2 3 claim for which inter partes review is sought by Global, no claim remains to be adjudicated in this proceeding. Under 37 C.F.R. § 42.73(b), a party may request an adverse judgment at any time during a proceeding. Disclaimer of claims, such that a party has no remaining claim in the proceeding, is deemed a request for entry of adverse judgment. 37 C.F.R. § 42.73 (b)(1) & (2). Accordingly, we construe Howlink’s statutory disclaimer of all of the challenged claims in the ’766 Patent as a request for adverse judgment. ORDER For the reasons set forth above, it is: ORDERED that judgment is herein entered against Howlink with respect to claims 1-34 of the ’766 Patent on the basis that such claims have been disclaimed. PETITONER Lori Gordon Michael Ray STERNE, KESSLER, GOLDSTEIN & FOX Lgordon-PTAB@skgf.com Mray-PTAB@skgr.com PATENT OWNER Andrew Choung Rex Hwang GLASER WEIL FINK HOWARD AVCHEN & SHAPIRO LLP achoung@glaserweil.com rhwang@glaserweil.com Copy with citationCopy as parenthetical citation