`571-272-7822
`
`
`
`
`
` Paper No. 57
` Entered: August 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`PHARMACOSMOS A/S,
`Petitioner
`
`v.
`
`LUITPOLD PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01490
`Patent 7,754,702 B2
`____________
`
`
`
`
`
`Before TONI R. SCHEINER and CHRISTOPHER G. PAULRAJ,
`Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2015-01490
`Patent 7,754,702 B2
`
`
`During the course of this proceeding, Patent Owner filed a “Notice of
`Disclaimer” in which Patent Owner purported to disclaim claims 28 and 29
`of U.S. Patent No. 7,754,702 B2 (“the ’702 patent”). Paper 52. Consistent
`with that Notice, the Board in its Final Written Decision determined that
`Petitioner’s challenge of claim 28 was moot. Paper 54, 7 n. 2 and 51.
`35 U.S.C. § 253 governs statutory disclaimers before the Office and
`provides:
`(a) IN GENERAL.—Whenever a claim of a patent is invalid
`the remaining claims shall not thereby be rendered invalid. A
`patentee, whether of the whole or any sectional interest therein,
`may, on payment of the fee required by law, make disclaimer of
`any complete claim, stating therein the extent of his interest in
`such patent. Such disclaimer shall be in writing and recorded in
`the Patent and Trademark Office, and it shall thereafter be
`considered as part of the original patent to the extent of the
`interest possessed by the disclaimant and by those claiming
`under him.
`35 U.S.C. § 253 (emphasis added). Additionally, 37 CFR § 1.321 provides,
`in relevant part:
`(a) A patentee owning the whole or any sectional interest in a
`patent may disclaim any complete claim or claims in a patent.
`In like manner any patentee may disclaim or dedicate to the
`public the entire term, or any terminal part of the term, of the
`patent granted. Such disclaimer is binding upon the grantee and
`its successors or assigns. A notice of the disclaimer is published
`in the Official Gazette and attached to the printed copies of the
`specification. The disclaimer, to be recorded in the Patent and
`Trademark Office, 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
`
`
`
`2
`
`
`
`IPR2015-01490
`Patent 7,754,702 B2
`
`
`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 § 1.20(d).
`37 C.F.R. § 1.321(a) (emphasis added). As set forth in the Manual of Patent
`Examining Procedure (MPEP) § 1490(IV), the Office’s Certificate of
`Correction Branch is responsible for processing all statutory disclaimers
`filed under 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321. MPEP § 1490(IV).
`Although Patent Owner informed us of its intention to disclaim claims
`28 and 29 of the ’702 patent, it does not appear that Patent Owner has
`otherwise followed the requirements for a statutory disclaimer, including
`payment of the relevant fee.
`Accordingly, it is hereby:
`ORDERED that, within 10 business days of this Order, Patent Owner
`shall file a statutory disclaimer for claims 28 and 29 of the ’702 Patent in
`accordance with the requirements of 37 C.F.R. § 1.321(a) and MPEP §
`1490(IV).
`
`
`
`
`
`
`3
`
`
`
`IPR2015-01490
`Patent 7,754,702 B2
`
`For PETITIONER:
`Lisa Kole
`Steven Lendaris
`Paul Ragusa
`Jennifer Tempesta
`BAKER BOTTS LLP
`lisa.kole@bakerbotts.com
`steven.lendaris@bakerbotts.com
`paul.ragusa@bakerbotts.com
`jennifer.tempesta@bakerbotts.com
`
`For PATENT OWNER:
`
`George Quillin
`Michael Kaminski
`FOLEY & LARDNER LLP
`gquillin@foley.com
`mkaminski@foley.com
`
`
`
`
`
`4
`
`
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