Trials@uspto.gov
`571.272.7822
`
`Paper 10
`Entered: March 23, 2017
`
`
`
`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 IPR2017-00209
`Patent 7,490,037 B2
`____________
`
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`Opinion of the Board filed by Administrative Patent Judge
`WORMMEESTER.
`
`Opinion Concurring filed by Administrative Patent Judge FITZPATRICK.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`CORRECTED DECISION1
`Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.107(e), 42.108
`
`1 This Decision was originally entered on March 13, 2017. It is being re-
`entered to correct a typographical error in the caption.
`
`
`
`
`571.272.7822
`
`Paper 10
`Entered: March 23, 2017
`
`
`
`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 IPR2017-00209
`Patent 7,490,037 B2
`____________
`
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`Opinion of the Board filed by Administrative Patent Judge
`WORMMEESTER.
`
`Opinion Concurring filed by Administrative Patent Judge FITZPATRICK.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`CORRECTED DECISION1
`Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.107(e), 42.108
`
`1 This Decision was originally entered on March 13, 2017. It is being re-
`entered to correct a typographical error in the caption.
`
`
`
`
`
`IPR2017-00209
`Patent 7,490,037 B2
`
`
`I. INTRODUCTION
`RPX Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–4, 7, 9–15, 17–21, 24, 25, 29, 31,
`and 32 of U.S. Patent No. 7,490,037 B2 (Ex. 1101, “the ’037 patent”).
`Digital Audio Encoding Systems, LLC (“Patent Owner”) did not file a
`Preliminary Response. We have jurisdiction under 35 U.S.C. § 314 and
`37 C.F.R. § 42.4(a). For the reasons that follow, we decline to institute an
`inter partes review.
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify three other pending requests for inter partes
`review involving the ’037 patent, including Unified Patents Inc. v. Digital
`Audio Encoding Systems, LLC, Case IPR2016-01710 (“the 1710 IPR”).
`Pet. ix; Paper 4, 1.
`Petitioner also identifies more than twenty federal district court cases
`involving the ’037 patent. Pet. vii–ix.
`
`
`B. The ’037 Patent
`The ’037 patent, titled “Method and Apparatus for Encoding Signals,”
`relates to encoding digitized audio signals and processing the encoded
`signals. Ex. 1101, [54], [57]. Given the procedural posture of this
`proceeding, we need not discuss further the substance of the patent.
`
`
`2
`
`
`
`IPR2017-00209
`Patent 7,490,037 B2
`
`
`III. ANALYSIS
`In the 1710 IPR, which also involves the ’037 patent, Patent Owner
`represented that it “believes that the patent claims of the subject patent, U.S.
`Patent No. 7,490,037 (the ‘’037 patent’) are invalid in light of recently-
`developed information, specifically, a break in the continuity in the chain of
`priority applications due to failure to pay an extension fee,” and that it
`therefore “expect[s] to take steps to seek an adverse judgment on the above-
`identified IPR, and/or dedicate the patent to the public.” Unified Patents
`Inc. v. Digital Audio Encoding Sys., LLC, Case IPR2016-01710, slip op. at 1
`(PTAB Dec. 20, 2016) (Paper 15). Since making those representations,
`Patent Owner filed in the instant case both a Request for Adverse Judgment
`(Paper 5) and a statutory disclaimer (Paper 6) disclaiming all thirty-two
`claims of the ’037 patent. In addition, during a conference call between the
`panel and respective counsel for the parties held on January 24, 2017,
`counsel for Patent Owner indicated that it did not believe that any continuing
`prosecution associated with the ’037 patent exists.
`The Director has delegated to the Board authority to determine
`whether to institute an inter partes review. 37 C.F.R. § 42.4(a). The
`Director has determined that:
`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.
`37 C.F.R. § 42.107(e). Pursuant to 35 U.S.C. § 253(a), “[s]uch 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.” Given the
`phrase “considered as part of the original patent,” “[a] statutory disclaimer
`
`3
`
`
`
`IPR2017-00209
`Patent 7,490,037 B2
`
`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.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383
`(Fed. Cir. 1998); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); see
`also Altoona Publix Theatres v. American Tri–Ergon Corp., 294 U.S. 477,
`492 (1935) (“Upon the filing of the disclaimers, . . . the public was entitled
`to manufacture and use the device originally claimed as freely as though [the
`claim] had been abandoned.”).
`As discussed above, Patent Owner here disclaimed all thirty-two
`claims of the ’037 patent under section 253. Accordingly, Patent Owner
`“effectively eliminated those claims from the original patent.” See Vectra,
`162 F.3d at 1383. In light of such elimination of all thirty-two claims from
`the ’037 patent, as well as Patent Owner’s belief that all those claims were
`already invalid and that no continuing prosecution associated with the
`’037 patent exists, we deny as moot the Petition, which requests inter partes
`review of claims 1–4, 7, 9–15, 17–21, 24, 25, 29, 31, and 32 of the ’037
`patent. In addition, we also dismiss as moot Patent Owner’s Request for
`Adverse Judgment.
`
`
`IV. CONCLUSION
`For the foregoing reasons, we decline to institute an inter partes
`review of U.S. Patent No. 7,490,037 B2.
`
`
`4
`
`
`
`IPR2017-00209
`Patent 7,490,037 B2
`
`
`V. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied as moot and no trial is
`instituted; and
`FURTHER ORDERED that Patent Owner’s Request for Adverse
`Judgment (Paper 5) is dismissed as moot.
`
`
`
`5
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`Paper 10
`Entered: March 23, 2017
`
`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 IPR2017-00209
`Patent 7,490,037 B2
`____________
`
`
`
`
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`FITZPATRICK, Administrative Patent Judge, concurring.
`
`
`
`
`
`
`IPR2017-00209
`Patent 7,490,037 B2
`
`
`I join the majority’s decision denying the Petition to institute an inter
`partes review and dismissing Patent Owner’s Request for Adverse
`Judgment.
`I write separately to state that I would dismiss the Request for
`Adverse Judgment, not because it is moot, but because there exists no inter
`partes review between the parties in which to enter such a judgment. Absent
`an instituted inter partes review, we may not enter a judgment. See Unified
`Patents Inc. v. Digital Audio Encoding Sys., LLC, No. IPR2016-01710
`(PTAB Feb. 28, 2017) (Paper 20) (Fitzpatrick, APJ, concurring).
`
`
`
`
`
`
`
`2
`
`
`
`3
`
`IPR2017-00209
`Patent 7,490,037 B2
`
`PETITIONER:
`Elisabeth Hunt
`Ehunt-ptab@wolfgreenfield.com
`Richard Giunta
`Rgiunta-ptab@wolfgreenfield.com
`Randy Pritzker
`rpritzker@wolfgreenfield.com
`
`
`
`PATENT OWNER:
`Timothy Devlin
`tdevlin@devlinlawfirm.com
`
`
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