Smith & Nephew, Inc. v Bonutti Skeletal Innovations LLC

Patent Trial and Appeal BoardMar 24, 2014

11170969 (P.T.A.B. Mar. 24, 2014)

Trials@uspto.gov Paper 14 571-272-7822 Entered: March 24, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SMITH & NEPHEW, INC. Petitioner v. BONUTTI SKELETAL INNOVATIONS LLC Patent Owner ____________ Case IPR2013-00605 Patent 7,749,229 B1 Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and RICHARD E. RICE, Administrative Patent Judges. RICE, Administrative Patent Judge. JUDGMENT Disclaimer of a Claim 37 C.F.R. § 42.73(b)(2) Case IPR2013-00605 Patent 7,749,229 B1 2 On March 13, 2014, Patent Owner filed a “Notice Regarding Filing of Disclaimer of a Claim in a Patent Under 37 C.F.R. § 1.321(a)” (“Notice”). Paper 11. The Notice indicates that a disclaimer was filed in connection with U.S. Patent No. 7,749,229 B1 (“the ’229 patent”), disclaiming claim 23 of the ’229 patent. Patent Owner filed a copy of the disclaimer as Exhibit 2001. 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). As claim 23 of the ’229 patent is the only claim challenged (Paper 3 at 2, 4), and claim 23 has been disclaimed, Patent Owner has no remaining claim in this inter partes review. Accordingly, it is hereby ORDERED that Patent Owner’s request for judgment against itself under 37 C.F.R. § 42.73(b)(2), with respect to claim 23 of U.S. Patent No. 7,749,229 B1, is GRANTED; and FURTHER ORDERED that judgment is entered herein against Patent Owner with respect to claim 23 of U.S. Patent No. 7,749,229 B1. Case IPR2013-00605 Patent 7,749,229 B1 3 PETITIONER: David L. Cavanaugh Jacob S. Oyloe WILMER CUTLER PICKERING HALE and DORR LLP david.cavanaugh@wilmerhale.com jocob.oyloe@wilmerhale.com PATENT OWNER: Cary Kappel William Gehris Davidson, Davidson & Kappel, LLC ckappel@ddkpatent.com wgehris@ddkpatent.com