`
`By: Sean Luner
`
`DOVEL & LUNER, LLP
`
`201 Santa Monica Blvd, Suite 600
`
`Santa Monica, CA 90401
`
`Telephone (310) 656-7066
`
`sean@dovel.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2015-01711
`Patent 7,525,484 B2
`__________________
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`Case No. IPR2015-01711
`Patent 7,525,484 B2
`Patent Owner’s Response
`
`Table of Authorities
`
`Cases
`Genetics Inst., LLC v. Novartis Vaccines and Diagnostics, Inc.,
`655 F.3d 1291 (Fed. Cir. 2011) .............................................................................. 1
`
`
`
`Guinn v. Kopf, 96 F.3d 1419 (Fed. Cir. 1996) ........................................................... 1
`
`
`
`i
`
`
`
`Case No. IPR2015-01711
`Patent 7,525,484 B2
`Patent Owner’s Response
`
`Exhibit List
`
`Description
`
`Narrowing Agreement
`Disclaimer in Patent Under 37 CFR 1.321(a) – Patent No.
`7,525,484 B2
`
`Exhibit No.
`2001
`2002
`
`
`
`
`
`ii
`
`
`
`Claim 27 of the ‘484 patent is challenged in this Inter Partes Review. This
`
`Case No. IPR2015-01711
`Patent 7,525,484 B2
`
`
`
`
`claim is no longer asserted in the co-pending district court litigation against any of
`
`the Petitioners or any other parties. Patent Owner maintains claim 27 was and is
`
`patentable and non-obvious. However, Patent Owner wishes to avoid the time and
`
`expense of defending this no-longer asserted claim in this proceeding, particularly
`
`since its limited resources are needed to prosecute the co-pending litigation as it
`
`nears trial. Patent Owner has therefore filed a disclaimer with the Patent Office
`
`pursuant to 37 CFR 1.321(a), disclaiming the sole challenged claim in this
`
`proceeding. Ex. 2002.
`
`
`
`The effect of the disclaimer is that claim 27 of the ‘484 patent is treated as if
`
`it had never existed. Genetics Inst., LLC v. Novartis Vaccines and Diagnostics,
`
`Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011) (“upon entry of a disclaimer under §
`
`253, we treat the patent as though the disclaimed claim(s) had never existed”
`
`(internal quotations omitted)); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)
`
`(“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the
`
`claims from the patent and the patent is viewed as though the disclaimed claims
`
`had never existed in the patent” (emphasis added)). As a result, this proceeding is
`
`now moot—the Board need not and cannot determine whether a claim that is
`
`treated as having never existed is or is not patentable. Accordingly, Patent Owner
`
`1
`
`
`
`
`
`
`
`
`
`/Sean Luner/
`Sean Luner, Esq.
`Registration No. 36,588
`DOVEL & LUNER, LLP.
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
`
`anticipates seeking permission to file a motion to terminate this proceeding, to the
`
`Case No. IPR2015-01711
`Patent 7,525,484 B2
`
`
`Respectfully submitted,
`
`extent such a motion is necessary.
`
`
`
`Date: August 19, 2016
`
`
`
`
`
`
`
`
`
`By:
`
`2
`
`
`
`Case No. IPR2015-01711
`Patent 7,525,484 B2
`
`
`Certificate of Filing and Service
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.102 together with
`
`EXHIBIT 2002 are being filed via PTAB E2E and served by electronic mail this
`
`19th day of August 2016 on counsel for Petitioners as follows:
`
`Brian W. Oaks
`BAKER BOTTS, LLP,
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Telephone (512) 322-5470
`Facsimile (512) 322-3621
`brian.oaks@bakerbotts.com
`
`Douglas M. Kubehl
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6486
`Facsimile (214) 661-4486
`doug.kubehl@bakerbotts.com
`
`Chad C. Walters
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6511
`Facsimile (214) 661-4511
`chad.walters@bakerbotts.com
`
`
`
`
`
`
`/Sean Luner/
`Sean Luner, Esq.
`Registration No. 36,588
`DOVEL AND LUNER
`
`
`
`
`
`3
`
`
`
`Date: August 19, 2016
`
`
`
`
`
`
`Case No. IPR2015-01711
`Patent 7,525,484 B2
`
`
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`4
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