Rein Tech, Inc.

Patent Trials and Appeals Board

Sep 1, 2020

IPR2020-00099 (P.T.A.B. Sep. 1, 2020)

Trials@uspto.gov Paper 13
571.272.7822 Date: September 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MUELLER SYSTEMS, LLC,
Petitioner

v.

REIN TECH, INC.,
Patent Owner.
____________

IPR2020-00099
Patent 8,347,427 B2
____________

Before CARL M. DEFRANCO, TIMOTHY J. GOODSON, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

ORDER
Granting Request for Adverse Judgment After Institution of Trial
37 C.F.R. § 42.73(b)
and
Lifting Stay of Ex Parte Reexamination Control No. 90/014,351
35 U.S.C. § 315(d); 37 C.F.R. § 42.122(a)

IPR2020-00099
Patent 8,347,427 B2

2
I. INTRODUCTION
Petitioner filed a Petition (Paper 2, “Pet.”) requesting an inter partes
review (“IPR”) of claims 1–8, 13–16, and 18–20 of U.S. Patent
No. 8,347,427 B2 (“the ’427 patent”). Pet. 1. We instituted trial on all
challenged claims (Paper 9), and entered an Order staying the concurrent ex
parte reexamination of the ’427 patent, namely Reexamination Control
No. 90/014,351 (Paper 11). Thereafter, Patent Owner filed a Request for
Adverse Judgment, in which it “respectfully requests entry of adverse
judgment in this IPR under 37 C.F.R. § 42.73(b)(2).” Paper 12, 1.
Petitioner has not filed an opposition to Patent Owner’s Request for Adverse
Judgment, and the deadline for any such opposition has passed.

II. ANALYSIS
A party may “request judgment against itself at any time during a
proceeding.” 37 C.F.R. § 42.73(b). The particular provision under which
Patent Owner requests adverse judgment provides that requests for adverse
judgment include “[c]ancellation or disclaimer of a claim such that the party
has no remaining claim in the trial.” Id. § 42.73(b)(2). Patent Owner’s
request for adverse judgment thus constitutes a request for cancellation of all
claims challenged in the Petition, leaving no claims for trial. As no claims
will remain for trial, entry of adverse judgment against Patent Owner is
appropriate.
Adverse judgment brings with it certain consequences that are
specified in the rules governing these proceedings. In particular, pursuant to
37 C.F.R. § 42.73(d)(3)(i), Patent Owner “is precluded from taking action
inconsistent with the adverse judgment, including obtaining in any patent . . .
IPR2020-00099
Patent 8,347,427 B2

3
[a] claim that is not patentably distinct from a finally refused or canceled
claim.”
Our entry of adverse judgment brings about the conclusion of this
proceeding. In view of the completion of this proceeding, it is appropriate to
lift the stay of the concurrent ex parte reexamination. See Paper 11, 7
(“Reexamination Control No. 90/014,351 is stayed pending the termination
or completion of IPR2020-00099.”).

III. CONCLUSION
We grant Patent Owner’s request for adverse judgment. We lift the
stay of Reexamination Control No. 90/014,351.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s request for adverse judgment is
granted;
FURTHER ORDERED that judgment against Patent Owner, pursuant
to 37 C.F.R. § 42.73(b)(2), is entered;
FURTHER ORDERED that claims 1–8, 13–16, and 18–20 of U.S.
Patent No. 8,347,427 B2 are cancelled;
FURTHER ORDERED that this Order constitutes a Final Written
Decision under 35 U.S.C. § 318(a);
FURTHER ORDERED that the stay of Reexamination Control
No. 90/014,351 is lifted;
IPR2020-00099
Patent 8,347,427 B2

4
FURTHER ORDERED that, no later than one week after entry of this
Order, Patent Owner shall file a copy of this Order in Reexamination
Control No. 90/014,351; and
FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(d)(3),
Patent Owner shall not take any action inconsistent with this adverse
judgment, including obtaining in any patent a claim that is not patentably
distinct from the cancelled claims in this proceeding.
IPR2020-00099
Patent 8,347,427 B2

5
FOR PETITIONER:
Coby Nixon
TAYLOR ENGLISH DUMA LLP
cnixon@taylorenglish.com

FOR PATENT OWNER:
Michael Klipcera
PATENT TECHNOLOGY, LLC
michael.reintech@gmail.com

Peter Corcoran
CORCORAN IP LAW PLLC
peter@corcoranip.com