AVX Corporationv.Greatbatch, Ltd.

Patent Trial and Appeal Board

Nov 19, 2015

11162350 (P.T.A.B. Nov. 19, 2015)

Trials@uspto.gov Paper 22
571-272-7822 Entered: November 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AVX CORPORATION,
Petitioner,

v.

GREATBATCH LTD.,
Patent Owner.
____________

Case IPR2015-00713
Patent 7,035,077 B2
____________

Before MICHAEL P. TIERNEY, JON B. TORNQUIST, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

TORNQUIST, Administrative Patent Judge.

JUDGMENT AND FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. §42.73

IPR2015-00713
Patent 7,035,077 B2

2
BACKGROUND
On February 6, 2015, Petitioner requested inter partes review of
claims 1, 2, 6–9, 13, 14, 18, 19, 23, 24, 28–31, 35, 36, 40, and 41 of U.S.
Patent No. 7,035,077 B2 (“the ’077 patent”). Paper 3. On August 19, 2015,
we instituted inter partes review with respect to claims 1, 2, 8, 9, 23, 24, 30,
and 31 of the ’077 patent. Paper 8, 25. On November 13, 2015, Greatbatch,
Ltd. (“Patent Owner”) filed a statutory disclaimer under 37 C.F.R.
§ 1.132(a) with the United States Patent and Trademark Office disclaiming
claims 1–44 (all claims) of the ’077 patent. Paper 21, 1. On the same day,
Patent Owner filed a Request for Entry of Adverse Judgment pursuant to 37
C.F.R. § 42.73(b)(1) in this proceeding. Id.
DISCUSSION
A party may request judgment against itself at any time during a
proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for
adverse judgment include disclaimer of the involved application or patent
and cancellation or disclaimer of a claim such that the party has no
remaining claim in the trial. Id.
In light of Patent Owner’s disclaimer of claims 1–44 of the ’077
patent, we determine that entry of judgment against Patent Owner with
respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is
appropriate.
ORDER
It is:
ORDERED that Patent Owner’s request for adverse judgment is
granted;
FURTHER ORDERED that judgment is entered against Patent Owner
IPR2015-00713
Patent 7,035,077 B2

3
with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent;
FURTHER ORDERED that claims 1, 2, 8, 9, 23, 24, 30, and 31 of the
’077 patent are cancelled; and
FURTHER ORDERED that this Decision constitutes a final written
decision under 35 U.S.C. § 318(a).
IPR2015-00713
Patent 7,035,077 B2

4
PETITIONER:
Paul S. Hunter
phunter@foley.com

Nicholas M. Lagerwall
nlagerwall@foley.com

Michael Houston
mhouston@foley.com

PATENT OWNER:
Richard Neifeld
rneifeld@neifeld.com

Robert Mihail
rmihail@neifeld.com