Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 13
`Entered: October 31, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`ARTHREX, INC. and SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`VITE TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`_______________
`
`
`Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`GOODSON, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Second Request for Adverse Judgment
`37 C.F.R. § 42.73
`
`
`Tel: 571-272-7822
`
`
`
`Paper 13
`Entered: October 31, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`ARTHREX, INC. and SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`VITE TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`_______________
`
`
`Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`GOODSON, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Second Request for Adverse Judgment
`37 C.F.R. § 42.73
`
`
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`
`
`On June 28, 2016, we instituted this inter partes review of
`
`claims 21, 25–27, 29, 30, 38, and 39 of U.S. Patent No. 6,168,598 B1 (“the
`
`’598 patent”). Paper 7. On October 17, 2016, Patent Owner filed a Request
`
`for Adverse Judgment Under 37 C.F.R. § 42.73(b). Paper 10 (“First
`
`Request”). Patent Owner’s First Request noted that the ’598 patent is the
`
`subject of an ex parte reexamination proceeding, in which “the majority of
`
`the original claims at issue in the present proceeding” have been rejected.
`
`Id. at 1. In the First Request, Patent Owner “ask[ed] that the Board cancel
`
`the only claims remaining in this proceeding (claims 21, 25–27, 29, 30, 38,
`
`and 39) and enter adverse judgment against it without prejudice to its ability
`
`to proceed with the ex parte reexaminations of the patents, including
`
`continuing prosecution of the claims currently pending there.” Id.
`
`(emphasis added).
`
`In ruling on the First Request, we observed that the language
`
`emphasized above conditioned the First Request on the adverse judgment
`
`being without prejudice to other claims not at issue in this proceeding.
`
`Paper 11, 2. We noted the explanation provided in a previous Board
`
`decision that “[w]e cannot make a determination regarding claims not
`
`involved in this inter partes review. A request for adverse judgment should
`
`not be made with conditions imposed on what effects it should or should not
`
`have on other claims.” Id. (quoting Hyundai Motor Co. v. American
`
`Vehicular Sciences LLC, Case IPR2014-00657, slip op. at 2 (PTAB
`
`Feb. 9, 2015) (Paper 16)). Accordingly, we denied Patent Owner’s First
`
`Request “without prejudice to Patent Owner refiling its request without any
`
`1
`
`
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`
`conditional language that seeks to limit the impact of the entry of adverse
`
`judgment.” Id.
`
`On October 24, 2016, Patent Owner filed a second paper entitled
`
`“Patent Owner’s Request for Adverse Judgment Under 37 C.F.R.
`
`§ 42.73(b).” Paper 12 (“Second Request”). The Second Request omits the
`
`language from the First Request that is emphasized above, but includes the
`
`following footnote: “Vite makes this request without waiving what rights
`
`Vite has to proceed with reexamination of U.S. Patent No. 6,168,598 and
`
`understands that the PTAB is not deciding the scope of those rights in
`
`entering an adverse judgment.” Id. at 2, n.1.
`
`The Second Request presents the same problem as the First Request,
`
`in that it attempts to impose limits on the adverse judgment and, therefore,
`
`introduces confusion into the effect that an adverse judgment would have.
`
`Specifically, the Second Request suggests that an adverse judgment would
`
`impose no barrier to whatever rights Patent Owner chooses to seek in the
`
`reexamination proceeding. However, one of the consequences of an adverse
`
`judgment is that “[a] patent applicant or owner is precluded from taking
`
`action inconsistent with the adverse judgment, including obtaining in any
`
`patent: (i) A claim that is not patentably distinct from a finally refused or
`
`canceled claim. . . .” 37 C.F.R. § 42.73(d)(3). Therefore, in this case, an
`
`adverse judgment would preclude Patent Owner from obtaining in the
`
`reexamination proceeding claim scope that is not patentably distinct from
`
`any of claims 21, 25–27, 29, 30, 38, and 39. In that sense, it is potentially
`
`misleading for the Second Request to state that “PTAB is not deciding the
`
`scope of those rights [i.e., the rights being pursued in the reexamination] in
`
`2
`
`
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`
`entering an adverse judgment.” Paper 12, 1.1 Patent Owner’s attempt to
`
`characterize what the PTAB is or is not deciding is misleading because if we
`
`enter adverse judgment, that judgment would, in fact, decide the scope of
`
`rights available to Patent Owner during its reexamination. An adverse
`
`judgment brings with it certain consequences that are defined by the Board’s
`
`rules. See 37 C.F.R. § 42.73. It is inappropriate for a request for adverse
`
`judgment to include language that seeks to alter, recharacterize, or put a
`
`gloss on those consequences.
`
`For the foregoing reasons, we deny Patent Owner’s Second Request.
`
`Patent Owner may refile its request without language that seeks to limit the
`
`impact of the entry of adverse judgment.
`
`It is:
`
`ORDERED that Patent Owner’s request for entry of adverse judgment
`
`is denied; and
`
`FURTHER ORDERED that Patent Owner may refile its request in a
`
`form that complies with the instructions set forth above.
`
`
`
`
`
`
`1 The claims that Patent Owner is seeking in the reexamination are not
`before us. This Order should not be interpreted as making any determination
`as to whether any of the reexamination claims are or are not patentably
`distinct from any of claims 21, 25–27, 29, 30, 38, and 39.
`
`3
`
`
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`
`PETITIONER:
`
`Michael Rader
`Mrader-PTAB@wolfgreenfield.com
`
`Randy Pritzker
`Rpritzker-PTAB@wolfgreenfield.com
`
`Anthony Cho
`acho@cgolaw.com
`
`
`
`PATENT OWNER:
`
`Steven Daniels
`sdaneils@farneydaniels.com
`
`Gurtej Singh
`tsingh@farneydaniels.com
`
`
`4
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