`571-272-7822
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`Paper 7
`Date: January 27, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`DIGITAL AUDIO ENCODING SYSTEMS, LLC,
`Patent Owner.
`
`
`
`Case IPR2017-00208
`Case IPR2017-00209
`Case IPR2017-00212
`Patent 7,490,037 B21
`
`
`
`
`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
`
`
`
`1 This Order employs a joint caption, as it is being entered in each of the
`identified proceedings. The parties may not use a joint caption unless
`authorized.
`
`
`
`IPR2017-00208
`IPR2017-00209
`IPR2017-00212
`Patent 7,490,037 B2
`
`Petitioner, RPX Corporation, filed Petitions to institute inter partes
`
`reviews of some or all of the thirty-two claims of U.S. Patent No. 7,490,037
`
`B2 (“the ’037 patent”). Paper 1.2 Thereafter, but before any decision
`
`whether to institute any of the petitioned-for reviews was rendered, Patent
`
`Owner, Digital Audio Encoding Systems, LLC, filed unopposed Requests
`
`for Adverse Judgment pursuant to 37 C.F.R. § 42.73(b). Paper 5.
`
`Pursuant to our instruction, a Board staff member sent an email to the
`
`parties stating:
`
`The panel notes that Patent Owner has filed in each of the
`above-identified cases a Request for Adverse Judgment in which
`Patent Owner seeks cancellation of all claims of U.S. Patent No.
`7,490,037 (“the ’037 patent”). As no trial has been instituted in
`any of these cases, the panel requests Patent Owner to file with
`the Patent and Trademark Office a statutory disclaimer as to all
`claims of the ‘037 patent under 35 U.S.C. § 253(a). See 37
`C.F.R. § 42.107(e) (“The patent owner may file a statutory
`disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a)
`of this chapter, disclaiming one or more claims in the patent. No
`inter partes review will be instituted based on disclaimed
`claims.”). The panel also requests that a copy of the disclaimer
`be filed in each of the above-identified cases.
`
`Jan. 9, 2017, email from trials@uspto.gov to counsel for both parties.
`
`On January 24, 2017, we conducted a conference call with respective
`
`counsel for the parties to discuss the status of any statutory disclaimer, as no
`
`copy of the same had been filed in any of these proceedings. During the
`
`call, Patent Owner indicated its intent to file a statutory disclaimer and
`
`
`
`2 Citations are provided to IPR2017-00208 only, but they are exemplary
`with respect to all three proceedings.
`
`2
`
`
`
`IPR2017-00208
`IPR2017-00209
`IPR2017-00212
`Patent 7,490,037 B2
`
`copies of the same in each proceeding as quickly as possible. Petitioner
`
`stated that, even if all the claims of the ’037 patent are statutorily disclaimed
`
`(and they now have been—see Paper 6), Patent Owner’s Requests for
`
`Adverse Judgment still should be granted. Petitioner revealed that it wants
`
`adverse judgment because it would estop Patent Owner “from taking action
`
`inconsistent with the adverse judgment.” See 37 C.F.R. § 42.73(d)(3).
`
`Prior to our deciding whether to grant or deny the Requests for
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`Adverse Judgment, the parties will have the opportunity to brief whether we
`
`have the power to enter adverse judgment in these proceedings, where no
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`instituted review of the patent exists.
`
`The Board frequently employs, as we do here, the term “proceeding”
`
`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
`
`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
`
`§ 42.73. See Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781
`
`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
`
`identify the statutory source of our power to enter adverse judgment when
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`no review is instituted.
`
`
`
`3
`
`
`
`IPR2017-00208
`IPR2017-00209
`IPR2017-00212
`Patent 7,490,037 B2
`
`Accordingly, it is
`
`ORDERED that each party may file one brief, not exceeding five
`
`pages, directed to whether we have the power to enter adverse judgment in
`
`these proceedings; and
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`FURTHER ORDERED that any such briefs are due no later than
`
`February 9, 2017.
`
`
`
`4
`
`
`
`IPR2017-00208
`IPR2017-00209
`IPR2017-00212
`Patent 7,490,037 B2
`
`For Petitioner:
`
`Elisabeth Hunt
`Ehunt-ptab@wolfgreenfield.com
`
`Richard Giunta
`Rgiunta-ptab@wolfgreenfield.com
`
`Randy Pritzker
`rpritzker@wolfgreenfield.com
`
`
`
`For Patent Owner:
`
`Timothy Devlin
`tdevlin@devlinlawfirm.com
`
`
`
`
`
`
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`
`
`5
`
`
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