Jenam Tech LLC

Patent Trials and Appeals BoardNov 17, 2021

PGR2021-00082 (P.T.A.B. Nov. 17, 2021)

Trials@uspto.gov Paper 8 571-272-7822 Entered: November 17, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GOOGLE LLC, Petitioner, v. JENAM TECH LLC, Patent Owner. PGR2021-00082 Patent 10,742,774 B1 Before DANIEL J. GALLIGAN, SCOTT B. HOWARD, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION Denying Institution of Post-Grant Review Due to Disclaimer of All Challenged Claims 35 U.S.C. § 324; 37 C.F.R. § 42.207(e) PGR2021-00082 Patent 10,742,774 B1 2 I. INTRODUCTION Google LLC (“Petitioner”) filed a petition to institute a post-grant review of claim 1 of U.S. Patent No. 10,742,774 B1 (Ex. 1001, “the ’774 patent”). Paper 1 (“Pet.”). Jenam Tech LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). For the reasons discussed below, we do not institute a post-grant review. II. DISCUSSION Patent Owner argues that we should deny the Petition because, concurrent with the filing of its Preliminary Response, Patent Owner filed a statutory disclaimer, disclaiming the only claim at issue in this proceeding. Prelim. Resp. 1.1 See Ex. 2003 (Disclaimer in Patent under 37 CFR 1.321(a), Form PTO/SB/43 (07-09), filed Sept. 7, 2021). Under 37 C.F.R. § 42.207(e), “[t]he patent owner may file 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 post-grant review will be instituted based on disclaimed claims.” A disclaimer is “considered as part of the original patent” as of the date on which it is 1 In its Preliminary Response, Patent Owner also argues that the disclaimer of claim 1 should not be considered a request for adverse judgment. Prelim. Resp. 7 (citing General Elec. Co. v. United Techs. Corp., Case IPR2017-00491, Paper 9 (July 6, 2017) (designated precedential on Sept. 9, 2019)). In an email to the Board, Petitioner requested additional briefing on this issue. Ex. 3001. In a conference call with the Board, Petitioner argued that the Board should enter adverse judgment in this case, citing Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018). Patent Owner opposed Petitioner’s request. Because nothing in Arthrex compels entry of an adverse judgment in this case, we determine that no further briefing on the adverse-judgment issue is necessary. PGR2021-00082 Patent 10,742,774 B1 3 “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed 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 which is 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 C.F.R. § 1.321(a). “[N]othing in the statutes or regulations requires any action by the [Patent Office] for a disclaimer to be ‘recorded.’” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998). From our review of Exhibit 2003 and the Office’s public records, we conclude that a disclaimer of claim 1 of the ’774 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of September 7, 2021. Ex. 2003. Because the Board cannot institute trial on disclaimed claims and the sole challenged claim has been disclaimed here, no post-grant review will be instituted. III. ORDER It is ORDERED that the Petition is denied. PGR2021-00082 Patent 10,742,774 B1 4 FOR PETITIONER: Naveen Modi Joseph E. Palys Quadeer A. Ahmed Jason Heidemann PAUL HASTINGS LLP PH-Google-Jenam-PGR@paulhastings.com FOR PATENT OWNER: Timothy Devlin DEVLIN LAW FIRM LLC tdevlin@devlinlawfirm.com