`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Entered: October 18, 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 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 (“Request”).
`Patent Owner’s Request notes 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 Request, Patent Owner “asks 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).
`The language emphasized above conditions the Request on the
`adverse judgment being without prejudice to other claims not at issue in this
`proceeding. The Board has held on similar facts 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.” Hyundai
`Motor Co. v. American Vehicular Sciences LLC, Case IPR2014-00657, slip
`op. at 2 (PTAB Feb. 9, 2015) (Paper 16).
` Accordingly, we deny Patent Owner’s request for adverse judgment,
`without prejudice to Patent Owner refiling its request without any
`conditional language that seeks to limit the impact of the entry of adverse
`judgment.
`
`
`
`
`2
`
`
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`
`
`For the foregoing reasons, 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.
`
`
`
`PETITIONER:
`
`Michael Rader
`Mrader-PTAB@wolfgreenfield.com
`
`Randy Pritzker
`Rpritzker-PTAB@wolfgreenfield.com
`
`Anthony Cho
`acho@cgolaw.com
`
`
`PATENT OWNER:
`
`Steven Daniels
`sdaniels@farneydaniels.com
`
`Gurtej Singh
`tsingh@farneydaniels.com
`
`
`3
`
`
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