Jenam Tech, LLC

Patent Trials and Appeals Board

Mar 23, 2022

PGR2022-00013 (P.T.A.B. Mar. 23, 2022)

Trials@uspto.gov Paper 9 571-272-7822 Entered: March 23, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GOOGLE LLC, Petitioner, v. JENAM TECH, LLC, Patent Owner. PGR2022-00013 Patent 10,951,742 B1 Before DANIEL J. GALLIGAN, SCOTT B. HOWARD, and JASON M. REPKO, Administrative Patent Judges. GALLIGAN, Administrative Patent Judge. DECISION Denying Institution of Post-Grant Review Due to Disclaimer of All Challenged Claims 35 U.S.C. § 324; 37 C.F.R. § 42.207(e) PGR2022-00013 Patent 10,951,742 B1 2 I. INTRODUCTION Google LLC (“Petitioner”) filed a petition to institute a post-grant review of claims 1, 65, 73-78, 83, 86, 159, 167, 168, and 171 of U.S. Patent No. 10,951,742 B1 (Ex. 1001, “the ’742 patent”). Paper 1. Jenam Tech, LLC (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). For the reasons discussed below, we do not institute a post-grant review. II. DISCUSSION Patent Owner argues that we should deny the Petition because Patent Owner filed a statutory disclaimer, disclaiming all claims challenged in this proceeding. Prelim. Resp. 1; see also Ex. 2002 (Disclaimer in Patent under 37 CFR 1.321(a), Form PTO/SB/43 (07-09), filed Mar. 16, 2022). Under 37 C.F.R. § 42.207(e) (2021), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent,” and “[n]o post- grant review will be instituted based on disclaimed claims.” A disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation; (3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d). PGR2022-00013 Patent 10,951,742 B1 3 37 C.F.R. § 1.321(a). “[N]othing in the statutes or regulations requires any action by the [Patent Office] for a disclaimer to be ‘recorded.’” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998). From our review of Exhibit 2002 and the Office’s public records, we conclude that a disclaimer of claims 1, 65, 73-78, 83, 86, 159, 167, 168, and 171 of the ’742 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of March 16, 2022. Ex. 2002. Because the Board cannot institute trial on disclaimed claims and all of the challenged claims have been disclaimed here, no post-grant review will be instituted. See Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution of inter partes review under analogous rule 37 C.F.R. § 42.107(e) based on disclaimer). III. ORDER It is ORDERED that the Petition is denied. PGR2022-00013 Patent 10,951,742 B1 4 FOR PETITIONER: Naveen Modi Joseph Palys Quadeer Ahmed Jason Heidemann PAUL HASTINGS LLP naveenmodi@paulhastings.com josephpalys@paulhastings.com quadeerahmed@paulhastings.com jasonheidemann@paulhastings.com FOR PATENT OWNER: Timothy Devlin Derek Dahlgren DEVLIN LAW FIRM LLC td-ptab@devlinlawfirm.com ddahlgren@devlinlawfirm.com