Polaris Innovations, Ltd.

Patent Trials and Appeals Board

Aug 3, 2020

IPR2019-01514 (P.T.A.B. Aug. 3, 2020)

Trials@uspto.gov Paper 19
571-272-7822 Entered: August 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

ADVANCED MICRO DEVICES, INC.,
Petitioner,

v.

POLARIS INNOVATIONS LIMITED,
Patent Owner.

____________

IPR2019-01514
Patent 6,728,144 B2
____________

Before JAMESON LEE, CHRISTA P. ZADO, and
NORMAN H. BEAMER, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

JUDGMENT
Granting Request for Adverse Judgment After
Institution of Trial
37 C.F.R. § 42.73(b)

IPR2019-01514
Patent 6,728,144 B2

2
I. DISCUSSION
On March 2, 2020, we instituted an inter partes review of claims 1–7
of U.S. Patent No. 6,728,144 B2 (“the ’144 patent”). Paper 11. On May 11,
2020, Polaris Innovations Limited (“Patent Owner”) filed a statutory
disclaimer of claims 1–7 of the ’144 patent, thereby disclaiming all of the
claims challenged in this proceeding. Ex. 2001. On May 18, 2020, the
panel and counsel for the parties, Advanced Micro Devices, Inc.
(“Petitioner”) and Patent Owner, held a conference call to discuss Patent
Owner’s statutory disclaimer. Patent Owner seeks authorization to file a
motion to terminate the proceeding under 37 C.F.R. § 42.72 as moot in light
of the disclaimer. Petitioner opposes termination of this proceeding as moot,
and submits the disclaimer should be treated as a request for entry of adverse
judgement pursuant to 37 C.F.R. § 42.73(b). Section 47.73(b) provides “[a]
party may request adverse judgment against itself at any time during a
proceeding” and “[a]ctions construed to be a request for adverse judgement
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). We ordered Patent
Owner to show cause why the Board should not enter adverse judgement
against Patent Owner pursuant to § 42.73(b). Paper 14. Patent Owner filed
its Response to Order to Show Cause and Request to Terminate Proceeding
as Moot. Paper 17 (“Response”). Petitioner then filed its Reply in
Opposition to Patent Owner’s Response to Order to Show Cause and
Request to Construe Disclaimer as a Request for Adverse Judgment and
Terminate the Proceeding. Paper 18 (“Reply”).1

1 We ordered Patent Owner to show cause why we should not enter adverse
judgment and authorized Petitioner to respond, but our order did not
IPR2019-01514
Patent 6,728,144 B2

3
For the foregoing reasons, we enter adverse judgment against Patent
Owner pursuant to § 42.73(b) and terminate this proceeding.
Section 47.73(b) provides “[a] party may request adverse judgment
against itself at any time during a proceeding” and “[a]ctions construed to be
a request for adverse judgment include . . . [c]ancellation or disclaimer of a
claim such that a party has no remaining claim in the trial.” 37 C.F.R.
§ 42.73(b). Here, Patent Owner has disclaimed all of the claims of the ’144
patent, such that no claims remain in this proceeding. Therefore, under
§ 42.73(b), adverse judgment is appropriate. See Arthrex, Inc. v. Smith &
Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018) (“[Section 42.73(b)
gives the Board authority to construe a patent owner’s actions as a request
for an adverse judgment.”).
Patent Owner argues, nonetheless, that the Board should not enter
adverse judgment. Response 1. Patent Owner advances the following
arguments in support of its position that adverse judgment should not be
entered: 1) 37 C.F.R. §§ 42.73(b)(1)–(2) are inconsistent with the right to
disclaim patent claims under 35 U.S.C. § 253, arguing that under Guinn v.
Kopf, 96 F.3d 1419 (Fed. Cir. 1996), claims disclaimed under § 253 are
treated as though they never existed; 2) 37 C.F.R. §§ 42.73(b)(1)–(2) is
inconsistent with 35 U.S.C. § 311(b), arguing that § 311(b) limits the scope
of inter partes review to “claims of the patent,” but that disclaimed claims
are not, and never were, “claims of the patent”; 3) 37 C.F.R. § 42.73(d)(1)

authorize Patent Owner to file a motion requesting termination of this
proceeding as moot or authorize Petitioner to file a motion requesting entry
for adverse judgment and termination of this proceeding. Paper 14; 37
C.F.R. 42.20(a)–(b). In entering judgment, we do not consider the parties’
unauthorized requests.
IPR2019-01514
Patent 6,728,144 B2

4
amounts to patent owner estoppel, which is substantive and therefore, under
35 U.S.C. § 2(b)(2), beyond the Patent Office’s rulemaking authority; and 4)
the Board should exercise its discretion and vacate and terminate this
proceeding as moot. Id. at 1–5.
Petitioner responds that: 1) the Board has consistently entered
adverse judgments under 37 C.F.R. § 42.73(b) in response to similar
disclaimers, arguing Patent Owner’s voluntary dismissal of all claims is
significant; 2) Guinn supports entry of adverse judgment, arguing Guinn
rejected the argument that judgment against a disclaiming party was
inconsistent with statutory disclaimer; 3) entry of adverse entry is consistent
with public policy, arguing that in Rembrandt Wireless Techs. v. Samsung
Elecs. Co., 853 F.3d 1370 (Fed. Cir. 2017), the court criticized the same
arguments made by Patent Owner here and cited a number of cases in which
a court recognized the existence of claims despite invocation of disclaimer;
4) entry of adverse judgment protects the public from Patent Owner later
attempting to seek reissue and regain subject matter surrendered through
disclaimer; and 4) entry of adverse judgment in this case is within the scope
of the Board’s authority, arguing that here Petitioner seeks judgment under
37 C.F.R. § 42.73(b)(2), not estoppel under 37 C.F.R. § 42.73(d)(1), and
therefore whether the Board has proper authority under 37 C.F.R.
§ 42.73(d)(1) is irrelevant to the issue presented here. Reply 1–5.
Having reviewed the papers presented by the parties, we determine
entry of adverse judgement pursuant to 37 C.F.R. § 42.73(b) is appropriate.
Here, Patent Owner has disclaimed all of the claims of the ’144 patent, such
that no claims remain in this proceeding. We agree with Petitioner that
Guinn and 35 U.S.C. § 253 do not preclude entry of adverse judgment. As
IPR2019-01514
Patent 6,728,144 B2

5
argued by Petitioner, in both Guinn and Rembrandt the court recognized the
existence of claims despite the invocation of disclaimer. In Guinn—a case
involving an interference proceeding before the Board—the Federal Circuit
held the Board “had the authority and the responsibility” to resolve the
interference proceeding and render judgment against the patent owner as a
result of his disclaimer of the only claim in the proceeding. Guinn, 96 F.3d
at 1422. In Rembrandt—a case in which a patent owner sought to avoid the
effects of its failure to mark products by disclaiming claims—the Federal
Circuit clarified that although disclaimer had been held to relinquish the
rights of the patent owner disclaiming the claims, the Federal Circuit never
held that patent owner disclaimer relinquished the rights of the public.
Rembrandt, 853 F,3d at 1383–1384. We also agree with Petitioner that the
issue of patent owner estoppel under 37 C.F.R. § 42.73(d)(1) is not before
us. Thus, whether 37 C.F.R. § 42.73(d)(1) is a valid rule does not bear on
the question of whether adverse judgment should be entered under
§ 42.73(b)(2).
II. ORDER
Accordingly, it is
ORDERED that adverse judgement is hereby entered against Patent
Owner pursuant to 37 C.F.R. § 42.73(b) with respect to claims 1–7 of U.S.
Patent No. 6,728,144; and
FURTHER ORDERED that this proceeding is terminated.

IPR2019-01514
Patent 6,728,144 B2

6
For PETITIONER:

Ryan C. Richardson
Michael D. Specht
Michael B. Ray
Jonathan Tuminaro
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
rrichardson-ptab@sternekessler.com
mspecht-ptab@sternekessler.com
mray-ptab@sternekessler.com
jtuminar-ptab@sternekessler.com

For PATENT OWNER:

Jing H. Cherng
FREITAS & WEINBERG LLP
gcherng@fawlaw.com