`571-272-7822
`
`Paper 21
`Date: June 30, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`COMMSCOPE TECHNOLOGIES LLC,
`Petitioner,
`
`v.
`
`DALI WIRELESS INC.,
`Patent Owner.
`____________
`
`IPR2020-01473
`Patent 10,080,178 B2
`____________
`
`
`
`Before MELISSA A. HAAPALA, Senior Lead Administrative Patent Judge,
`and KARL D. EASTHOM and SHARON FENICK, Administrative Patent
`Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Granting Request for Adverse Judgment After
`Institution of Trial
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01473
`Patent 10,080,178 B2
`
`CommScope Technologies LLC (“Petitioner”) filed a Petition
`
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1–30 (the
`
`“challenged claims”) of U.S. Patent No. 10,080,178 B2 (Ex. 1001, the “’178
`
`patent”). Dali Wireless Inc. (“Patent Owner”) filed a preliminary response.
`
`Paper 9. After supplementary briefing, the Board instituted trial on the
`
`challenged claims. Paper 18 (Decision on Institution).
`
`Thereafter, Patent Owner filed a Motion to Amend. Paper 20. In its
`
`Motion to Amend, Patent Owner moves to cancel the challenged claims
`
`under 35 U.S.C. § 316 and 37 C.F.R. § 42.121, and further states “[t]here are
`
`no remaining claims at issue in this trial.” Motion to Amend 1.
`
`The Board construes an action cancelling or disclaiming claims such
`
`that no challenged claims remain in the trial as a request for adverse
`
`judgment. 37 C.F.R. § 42.73(b)(2) (“Actions construed to be a request for
`
`adverse judgment include . . . [c]ancellation or disclaimer of a claim such
`
`that the party has no remaining claim in the trial.”); see also McAfee, Inc. v.
`
`CAP Co., Ltd., IPR2016-00211, Paper 19 (PTAB, April 5, 2017) (entering
`
`adverse judgment based on motion to amend seeking cancellation of claims
`
`remaining in the trial).
`
`During a teleconference with the parties on June 16, 2021, the panel
`
`discussed with the parties the applicability of 37 C.F.R. § 42.73(b)(2).
`
`Petitioner argued that adverse judgment under 37 C.F.R. § 42.73(b)(2) is
`
`proper because the Motion to Amend seeks to cancel all the remaining
`
`claims in the trial. Patent Owner disagreed, arguing that Patent Owner did
`
`not request an adverse judgment, did not file a brief on the issue, and that by
`
`moving to cancel claims early in the trial process, Patent Owner attempted to
`
`2
`
`
`
`IPR2020-01473
`Patent 10,080,178 B2
`
`promote efficiency and an early resolution so that termination under 37
`
`C.F.R. § 42.72 is proper.
`
`Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without
`
`rendering a final written decision, where appropriate, including where the
`
`trial is consolidated with another proceeding or pursuant to a joint request
`
`under 35 U.S.C. 317(a) or 327(a).” In this case, there is no “consolidat[ion]
`
`. . . or a joint request under 35 U.S.C. 317(a) or 327(a).”
`
`Petitioner’s arguments are more persuasive. Under 37 C.F.R. §
`
`42.73(b)(2), “[a]ctions construed to be a request for adverse judgment
`
`include . . . [c]ancellation or disclaimer of a claim such that the party has no
`
`remaining claim in the trial.” In this case, the Board instituted trial and
`
`Patent Owner filed a Motion to Amend seeking to cancel all claims
`
`remaining in the trial and acknowledging that “[t]here are no remaining
`
`claims at issue in this trial.” Motion to Amend 1. Accordingly, we construe
`
`Patent Owner’s Motion to Amend as a request for adverse judgment and
`
`grant the request to cancel all remaining claims in the trial.
`
`
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that Patent Owner’s request for adverse judgment is
`
`granted;
`
`FURTHER ORDERED that claims 1–30 shall be cancelled; and
`
`FURTHER ORDERED that final judgment is entered against Patent
`
`Owner with respect to claims 1–30.
`
`
`
`3
`
`
`
`IPR2020-01473
`Patent 10,080,178 B2
`
`PETITIONER:
`
`Philip P. Caspers
`Samuel A. Hamer
`CARLSON CASPERS VANDENBURGH & LINDQUIST, PA
`pcaspers@ccvl.com
`shamer@carlsoncaspers.com
`
`
`PATENT OWNER:
`
`Michael Kim
`David Schumann
`Michael Saunders
`FOLIO LAW GROUP PLLC
`Michael.kim@foliolaw.com
`David.schumann@foliolaw.com
`Mike.saunders@foliolaw.com
`
`4
`
`
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