Rein Tech, Inc.

Patent Trials and Appeals Board

Sep 1, 2020

IPR2020-00100 (P.T.A.B. Sep. 1, 2020)

Trials@uspto.gov Paper 16
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.

IPR2020-00100
Patent 9,749,792 B2

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

JUDGMENT
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. 90/014,355
35 U.S.C. § 315(d); 37 C.F.R. § 42.122(a)

Petitioner filed a petition seeking inter partes review of claims 1–5,
12, 14, 17, 19, 22, 23, and 27 of U.S. Patent No. 9,749,792 B2 (“the ’792
patent”). See Paper 2, 1. We instituted trial on all challenged claims. See
IPR2020-00100
Patent 9,749,792 B2
2
Paper 9, 36. Soon after our Decision on Institution, we entered an Order
Staying Concurrent Ex Parte Reexamination that stayed Reexamination
Control No. 90/014,355 pending the termination or completion of the
present inter partes review proceeding. See Paper 11, 6–7. Patent Owner
then filed a Request for Adverse Judgment, in which it “requests entry of
adverse judgment in this IPR under 37 C.F.R. § 42.73(b)(2).” See Paper 14,
1.1 Petitioner has not filed an opposition to Patent Owner’s Request for
Adverse Judgment and the deadline for any such opposition has passed.
Our rules permit a patent owner to “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.” 37 C.F.R.
§ 42.73(b)(2). Patent Owner’s Request for Adverse Judgment thus
constitutes a cancellation of all claims challenged in the Petition, leaving no
claims remaining for trial.
We grant Patent Owner’s Request for Adverse Judgment. We note
that adverse judgment brings with it certain consequences that are specified
in the rules governing these proceedings. Among those consequences is that
a patent owner “is precluded from taking action inconsistent with the
adverse judgment, including obtaining in any patent . . . [a] claim that is not
patentably distinct from a finally refused or canceled claim . . . .” 37 C.F.R.
§ 42.73(d)(3). Our entry of adverse judgment brings about the conclusion of

1 Patent Owner filed what appears to be a duplicate of its Request for
Adverse Judgment in Paper 15.
IPR2020-00100
Patent 9,749,792 B2
3
this proceeding, making it appropriate to lift the stay of the concurrent ex
parte reexamination.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s request for adverse judgment is
granted;
FURTHER ORDERED that claims 1–5, 12, 14, 17, 19, 22, 23, and 27
of U.S. Patent No. 9,749,792 B2 are cancelled;
FURTHER ORDERED that judgment against Patent Owner, pursuant
to 37 C.F.R. § 42.73(b)(2), is entered;
FURTHER ORDERED that the stay of Reexamination Control
No. 90/014,355 is lifted;
FURTHER ORDERED that, no later than one week after entry of this
Judgment, Patent Owner shall file a copy of this Judgment in Reexamination
Control No. 90/014,355; and
FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(d)(3),
Patent Owner shall not take any action inconsistent with this Judgment,
including obtaining in any patent a claim that is not patentably distinct from
the cancelled claims in this proceeding.
IPR2020-00100
Patent 9,749,792 B2
4
FOR PETITIONER:
Coby Nixon
TAYLOR ENGLISH DUMA LLP
cnixon@taylorenglish.com
FOR PATENT OWNER:
Michael Klicpera
PATENT TECHNOLOGY, LLC
Debonair7@att.net

Peter Corcoran
CORCORAN IP LAW, PLLC
peter@corcoranip.com