Opower Inc.v.Leslie Weise

Patent Trial and Appeal Board

Nov 25, 2015

12701390 (P.T.A.B. Nov. 25, 2015)

Trials@uspto.gov Paper 29
571-272-7822 Entered: November 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

OPOWER INC.,
Petitioner,

v.

CLEANTECH BUSINESS SOLUTIONS, LLC,
Patent Owner.
____________

Case CBM2014-00155
Patent 8,489,245 B2
____________

Before KARL D. EASTHOM, TREVOR M. JEFFERSON, and
J. JOHN LEE, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

JUDGMENT AND FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
CBM2014-00155
Patent 8,489,245 B2

2
Patent Owner filed a Notice of Related Proceeding requesting an adverse
judgment in this proceeding. Paper 28 (“Notice”). The Notice states that Patent
Owner filed a statutory disclaimer in an ongoing reissue proceeding (U.S. Pat.
App. No. 12/701,390) involving the same patent at issue here (U.S. Patent No.
8,489,245 B2). The Notice also states that Patent Owner “disclaim[s] claims 1-
16 of U.S. Patent No. 8,489,245 (the ’245 [p]atent). According to 37 C.F.R.
§ 42.73(b)(2) . . . this disclaimer constitutes a request for adverse judgment.”
Paper 28, 1.
I. BACKGROUND
On January 12, 2015, the Board instituted a review of the patentability
of claims 1–16 of the ’245 patent. Paper 10. Patent Owner filed a Response
(Paper 19), Petitioner filed a Reply (Paper 20), and the parties requested and
appeared at an Oral Hearing on Oct. 8, 2015 (see Paper 27 (Record of Oral
Hearing)). On November 5, 2015, Patent Owner filed the aforementioned
statutory disclaimer in the noted reissue proceeding. See Paper 28 (attaching a
copy of a “Disclaimer in Patent Under 37 CFR § 1.321(a)”). On November 6,
2015, as indicated above, Patent Owner requested adverse judgment in this
proceeding. Paper 28.
II. DISCUSSION
A party may request judgment against itself at any time during a
proceeding. 37 C.F.R. § 42.73(b). 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.” 37 C.F.R. § 42.73(b)(2). Here, Patent
Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–16, all claims
CBM2014-00155
Patent 8,489,245 B2

3
involved in this trial. Paper 28. The statutory disclaimer constitutes a request
for entry of adverse judgment.
1

III. CONCLUSION
Entry of judgment against Patent Owner with respect to claims 1–16 of
the ’245 patent is appropriate.
IV. ORDER
Accordingly, it is
ORDERED that adverse judgment is entered under 37 C.F.R.
§ 42.73(b) against Patent Owner with respect to claims 1–16 of the ’245 patent;
and
FURTHER ORDERED that this Order constitutes a Final Written
Decision under 35 U.S.C. § 328(a).

1
During a telephone conference on November 17, 2015, which included
counsel for both parties and the panel, counsel for Petitioner stated he did not
object to the request for adverse judgment, but requested that the panel issue
with this judgment findings of fact and legal determinations arising from papers
of record. Petitioner expressed a concern over a potential for duplicated efforts
in ongoing reissue proceedings involving the ’245 patent. We exercise our
discretion and decline the request to supplement the record. See 37 C.F.R.
§ 42.73(d) (3) (i) (precluding Patent Owner from obtaining claims that are not
“patentably distinct from a finally refused or canceled claim”).
CBM2014-00155
Patent 8,489,245 B2

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Petitioner:

James Murphy
Margaux Aviguetero
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
james.murphy@novakdruce.com
margaux.aviguetero@novakdruce.com

For PATENT OWNER:

I-Wei Hsieh
Thomas Rozylowicz
CBM40262-0003CP1@fr.com

Leslie Weise
leslie@weise.com

W. Karl Renner
axf@fr.com