`571-272-7822
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`Paper 18
`Date: January 27, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`DIGITAL AUDIO ENCODING SYSTEMS, LLC,
`Patent Owner.
`
`
`
`Case IPR2016-01710
`Patent 7,490,037 B2
`
`
`
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-01710
`Patent 7,490,037 B2
`
`Petitioner, Unified Patents Inc., filed a Petition to institute inter partes
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`review of all thirty-two claims of U.S. Patent No. 7,490,037 B2 (“the ’037
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`patent”). Paper 1. Thereafter, but before any decision whether to institute
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`the petitioned-for review was rendered, Patent Owner, Digital Audio
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`Encoding Systems, LLC, filed an unopposed Request for Adverse Judgment
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`pursuant to 37 C.F.R. § 42.73(b). Paper 16. Patent Owner also statutorily
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`disclaimed all of the claims of the ’037 patent, and filed a copy of the
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`statutory disclaimer in the record of this proceeding. Paper 17.
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`By Rule, “[t]he patent owner may file a statutory disclaimer under
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`35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming
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`one or more claims in the patent.” 37 C.F.R. § 42.107(e). When that occurs,
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`as it has here, “[n]o inter partes review will be instituted.” Id. The Request
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`for Adverse Judgment is not moot, however, because adverse judgment
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`would estop Patent Owner “from taking action inconsistent with the adverse
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`judgment.” See 37 C.F.R. § 42.73(d)(3).
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`Prior to our deciding whether to grant or deny the Request for
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`Adverse Judgment, the parties may brief whether we have the power to enter
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`adverse judgment, where no instituted review of the patent exists.
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`The Board frequently employs, as we do here, the term “proceeding”
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`to describe a petitioned-for but not instituted inter partes review. And, we
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`are cognizant that 37 C.F.R. § 42.73 states that “[a] party may request
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`judgment against itself at any time during a proceeding” and that § 42.2
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`states that “Proceeding means a trial or preliminary proceeding.” Any brief
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`filed pursuant to this Order should not merely point this out. Rather, such a
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`brief should elaborate as to why the definition set forth in § 42.2 applies in
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`2
`
`
`
`IPR2016-01710
`Patent 7,490,037 B2
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`§ 42.73. See Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781
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`F.3d 1372, 1378 (Fed. Cir. 2015) (“The PTO’s own regulations are
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`inconsistent on [the meaning of proceeding].”). Such a brief should also
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`identify the statutory source of our power to enter adverse judgment when
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`no review is instituted.
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`
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`Accordingly, it is
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`ORDERED that each party may file one brief, not exceeding five
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`pages, directed to whether we have the power to enter adverse judgment in
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`this proceeding; and
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`FURTHER ORDERED that any such briefs are due no later than
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`February 9, 2017.
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`
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`3
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`4
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`IPR2016-01710
`Patent 7,490,037 B2
`
`For Petitioner:
`
`Vincent Galluzzo
`vgalluzzo@crowell.com
`
`Teresa Rea
`trea@crowell.com
`
`Jonathan Stroud
`jonathan@unifiedpatents.com
`
`
`For Patent Owner:
`
`Timothy Devlin
`tdevlin@devlinlawfirm.com
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