Target Corporationv.null

Patent Trial and Appeal BoardSep 25, 2014

13161138 (P.T.A.B. Sep. 25, 2014)

Trials@uspto.gov Paper 32 571-272-7822 Entered: May 8, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ TARGET CORPORATION, Petitioner, v. DESTINATION MATERNITY CORPORATION, Patent Owner. Case IPR2013-005331 Patent RE43,531 E Before MICHAEL P. TIERNEY, LORA M. GREEN, JONI Y. CHANG, THOMAS L. GIANNETTI, JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and MITCHELL G. WEATHERLY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge GREEN. Opinion Dissenting-in-part filed by Administrative Patent Judge FITZPATRICK, in which Administrative Patent Judges, BISK and WEATHERLY, join. JUDGMENT Request for Adverse Judgment 37 C.F.R. § 42.73(b) 1 Case IPR2014-00509 has been joined with this proceeding. Case IPR2013-00533 Patent No. RE43,531 E 2 The Board instituted inter partes review of claims 1 and 24–29 of U.S. Patent No. RE43,531 E on February 19, 2014. Paper 11, 2. On February 12, 2015, inter parties review was instituted on claims 18 and 19 in IPR2014-00509 (“the ’509 IPR”), which proceeding was joined with the instant proceeding. The ’509 IPR, Paper 31, 1. On April 20, 2015, Patent Owner filed a Motion for Adverse Judgment, asking that the Board cancel all claims on which trial was instituted, i.e., claims 1, 18, 19, and 24–29, and enter judgment against Patent Owner. Paper 81, 2. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Cancellation or disclaimer of one or more claims such that the patent owner has no remaining claim in the trial is construed to be a request for adverse judgment. 37 C.F.R. § 42.73(b)(2). Patent Owner has not only requested cancellation of all claims on which trial was instituted in this inter partes review, such that after the cancellation it will have no remaining claim in the trial, but has also expressly requested entry of adverse judgment. Accordingly, it is hereby ORDERED that Patent Owner’s Motion for Adverse Judgment is granted; FURTHER ORDERED Patent Owner’s request that claims 1, 18, 19, and 24–29 of U.S. Patent No. RE43,531 E be cancelled is granted; FURTHER ORDERED that IPR2013-00533 and IPR2014-00509 are hereby terminated; and FURTHER ORDERED that a copy of this Decision be entered into the file of Case IPR2014-00509. Case IPR2013-00533 Patent No. RE43,531 E 3 Opinion Dissenting-in-part filed by Administrative Patent Judge FITZPATRICK, in which BISK and WEATHERLY, Administrative Patent Judges, join. Claims 18 and 19 would not be before us but for a prior decision granting rehearing, which ultimately resulted in institution of an inter partes review of claims 18 and 19 based on a petition filed in IPR2014-00509 and joinder of that inter partes review with IPR2014-00533. See Papers 29–31 in IPR2014-00509. For the reasons we previously set forth in our dissents from the decisions granting rehearing, institution, and joinder (i.e., Papers 29–31 in IPR2014-00509), claims 18 and 19 are not properly before us. We respectfully dissent-in-part from the majority opinion supra, as it pertains to claims 18 and 19. Case IPR2013-00533 Patent No. RE43,531 E 4 For Petitioner: R. Trevor Carter trevor.carter@faegrebd.com Daniel Lechleiter daniel.lechleiter.ptab@faegrebd.com For Patent Owner: Paul Taufer paul.taufer@dlapiper.com Michael Burns michael.burns@dlapiper.com Stuart Pollack stuart.pollack@dlapiper.com

Target Corporation v. null