Global Tel*Link Corporationv.Howlink Global LLC

Patent Trial and Appeal Board

Aug 15, 2014

12969068 (P.T.A.B. Aug. 15, 2014)

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