3M Company, Incv.Andover Healthcare, Inc.

Patent Trial and Appeal Board

Apr 17, 2015

08961801 (P.T.A.B. Apr. 17, 2015)

Trials@uspto.gov Paper 15
571-272-7822 Entered: April 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

3M COMPANY, INC.,
Petitioner,
v.
ANDOVER HEALTHCARE, INC.,
Patent Owner.
_______________

Case IPR2014-00630
Patent 6,156,424
_______________

Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
BRIAN P. MURPHY, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

JUDGMENT
Request for Adverse Judgment
37 C.F.R. § 42.73
Case IPR2014-00630
Patent 6,156,424

2
Introduction
On April 9, 2015, Andover Healthcare, Inc. (“Patent Owner”) filed a
Request under 37 C.F.R. § 42.73(b)(2) to Cancel Claim 6. Paper 13
(“Req.”). On April 10, 2015, 3M Company, Inc. (“Petitioner”) requested a
conference call to discuss the language of the Request. A call was held
among counsel for Patent Owner, Petitioner, and Judges Crumbley, Kalan,
and Murphy on April 14, 2015.
Background
In the present proceeding, we initially denied institution of inter
partes review on October 20, 2014. Paper 9. Petitioner filed a Request for
Rehearing on November 19, 2014. Paper 10. On February 20, 2015, we
granted-in-part the Request for Rehearing and instituted inter partes review
of claim 6 of U.S. Patent No. 6,156,424 (“the ’424 Patent”). Paper 11.
Patent Owner, in its April 9, 2015 Request to Cancel Claim 6,
indicated that it “requests that claim 6 (only) be cancelled under 37 C.F.R. §
42.73(b)(2).” Req. 2. Patent Owner concluded that, because “inter partes
review was instituted only for claim 6, with claim 6 cancelled, there are no
remaining claims or issues for trial.” Id.
Judgment
Under 35 U.S.C. § 42.73(b), a party may request judgment against
itself at any time during a proceeding. Actions construed as a request for
entry of adverse judgment include “[c]ancellation or disclaimer of a claim
such that the party has no remaining claim in the trial.” 35 U.S.C.
§ 42.73(b)(2). Patent Owner has requested cancellation of claim 6 under 35
U.S.C. § 42.73(b)(2) and thus has requested entry of adverse judgment.
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During the conference call, Patent Owner clarified that the sole
purpose of its Request was to cancel claim 6. In response to a question by
the Board, Patent Owner acknowledged that its request to cancel the only
remaining claim in this proceeding would result in entry of adverse
judgment against Patent Owner. Patent Owner represented that it was
aware that entry of adverse judgment as a result of the cancellation would
result in termination of the proceeding.
Given Patent Owner’s representations during the call and in its
Request as filed, we grant Patent Owner’s request to cancel claim 6.
Cancellation of claim 6, the only claim on which we instituted inter partes
review, will terminate the proceeding. We make no determination as to
claims 1–5, which are not part of this proceeding.
Motion for Pro Hac Vice Admission
On April 13, 2015, Patent Owner filed a Motion for Pro Hac Vice
Admission of Mark Grossman. Paper 14. In view of our judgment and
termination of the proceeding herein, the Motion for Pro Hac Vice
Admission is denied as moot.
ORDER
Accordingly, it is:
ORDERED that adverse judgment is entered against Patent Owner
under 37 C.F.R. § 42.73(b);
FURTHER ORDERED that claim 6 of the ’424 patent will be
cancelled;
FURTHER ORDERED that this proceeding is terminated; and
Case IPR2014-00630
Patent 6,156,424

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FURTHER ORDERED that the Motion for Pro Hac Vice Admission
of Mark Grossman is denied as moot.

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Patent 6,156,424

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FOR PETITIONER:

Mark Sweet
mark.sweet@finnegan.com

Erin Sommers
erin.sommers@finnegan.com

FOR PATENT OWNER:

Peter Chiabotti
peter.chiabotti@akerman.com

Mark Passler
mark.passler@akerman.com