ABS Global, Inc., Patent Owner

10,982,187 Mailed: November 7, 2022

Petitioner’s request for a refund of certain post-institution fees paid on January 13, 2022, in the above proceeding is hereby granted.

The amount of $29,600.00 has been refunded to Petitioner’s deposit account.

The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner argues that Petitioner “fails to identify any legal or judgmental error, or any misapprehended facts or arguments previously presented to the Board, that would justify rehearing.” Opp.

Specifically, Patent Owner contends that in view of Apple and Stripe, Petitioner has not shown that the Decision denying institution is based on an erroneous interpretation of the law.

Even if the Board may be permitted to treat a pre- institution disclaimer as a request for adverse judgment, for the reasons set out below, we conclude that on this record it is not appropriate in this case.

Petitioner next contends that “[a]s the Board can take notice of [] its prosecution history [of the ’658 application], ABS has also not yet disclosed any of the challenges or information cited in the Petitions to the Examiner in an IDS.” Req.

As Patent Owner explains, it “simply made the determination [in these cases] that these were not the appropriate proceedings and circumstances to litigate the issues raised by Petitioner.

Denying Institution of Post-Grant Review Due to Disclaimer of All Challenged Claims 35 U.S.C. § 324; 37 C.F.R. § 42.207(e)

We exercise our discretion to issue one Decision to be filed in each proceeding.

The parties are not authorized to use this style of heading in subsequent papers.

Corp., IPR2019-01489, Paper 11 at 4–5 (Dec. 10, 2019) (denying institution based on disclaimer and declining authorization to file motion for adverse judgment); Google LLC v. Jenam Tech LLC, PGR2021-00082, Paper 8 at 2 n.1 (Nov. 17, 2021) (denying institution based upon disclaimer and declining petitioner’s request to file additional briefing regarding adverse judgment).

In the present instance, and consistent with Rule 42.207(e) and the Board’s precedential General Electric decision, we determine that a denial of institution is sufficient to dispose of this case.

The Notice of Filing Date Accorded to Petition entered in this proceeding authorizes parties to file motions for admission pro hac vice in accordance with the standards set forth in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (representative “Order – Authorizing Motion for Pro Hac Vice Admission”)).

The representative Order requires that a motion for admission pro hac vice be accompanied by “an affidavit or declaration of the individual seeking to appear.” Unified Patents, 3.

Accordingly, Petitioner has established good cause for pro hac vice admission of Mr. Harbin.

Petitioner has also filed a Mandatory Notice identifying Mr. Habin as backup counsel in accordance with 37 C.F.R. § 42.8(b)(3).

Accordingly, it is ORDERED that Petitioner’s Motion for admission pro hac vice of John W. Harbin for these proceedings are granted; Mr. Harbin is authorized to act as back-up counsel in the instant proceedings only; FURTHER ORDERED that Petitioner is to continue to have a registered practitioner represent it as lead counsel for these proceedings; FURTHER ORDERED that Mr. Harbin shall comply with the Consolidated Trial Practice Guide,3 84 Fed. Reg. 64,280 (Nov. 21, 2019), and the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations; and FURTHER ORDERED that Mr. Harbin is subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a) and the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.

On January 13, 2022, Select Sires Inc., Semex Alliance, Inc., Urus Group LP, and Inguran, LLC D/B/A Stgenetics (“Petitioner”) filed a motion requesting pro hac vice admission of John W. Harbin in each of the above- identified proceedings.

The Notice of Filing Date Accorded to Petition entered in this proceeding authorizes parties to file motions for admission pro hac vice in accordance with the standards set forth in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (representative “Order – Authorizing Motion for Pro Hac Vice Admission”)).

The representative Order requires that a motion for admission pro hac vice be accompanied by “an affidavit or declaration of the individual seeking to appear.” Unified Patents, 3.

Consequently, the Declaration fails to attest as to “[a]ll other proceedings before the Office for which [Mr. Harbin] has applied to appear pro hac vice in the last three (3) years.” Unified Patents, 3.

Accordingly, it is ORDERED that Petitioner’s Motion for Pro Hac Vice Admission of John W. Harbin in the above-identified proceeding is denied without prejudice; and FURTHER ORDERED that Petitioner is authorized to file a revised motion for admission pro hac vice of John W. Harbin along with a supporting declaration that complies with the standards set forth in Unified Patents.

Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.

Entering Adverse Judgment Against a Patent Owner Based on Subject Matter Eligibility in a Post-Grant Proceeding is Not Supported by Law and Conflicts with the Board’s Handling of Similar Cases .......................................................... 3

In view of this outcome in a case with analogous yet even more extreme facts, Petitioner clearly has not demonstrated that the Decision Denying Institution was based on an erroneous interpretation of the law.

(citing United States v. Munsingwear, Inc., 340 U.S. 36, 39-41 (1950) (“noting that ‘the established practice ... in dealing with a civil case from a court in the federal system which has become moot while [on appeal] is to reverse or vacate the judgment below and remand with a direction to dismiss’”)).

2 Patent Owner does not concede that the application identified by Petitioner is directed to similar or overlapping subject matter, and rejects any contention that estoppel under 37 C.F.R. § 42.73(d) would apply regardless of the outcome here.

In view of Apple and Stripe, Petitioner clearly has not shown that the Decision Denying Institution is based on any erroneous interpretation of the law, let alone any controlling authority.