Streamlight, Inc.

Patent Trials and Appeals Board

Aug 31, 2020

PGR2020-00062 (P.T.A.B. Aug. 31, 2020)

Trials@uspto.gov Paper 6
571-272-7822 Date: August 31, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PARHELION, INC.,
Petitioner,
v.
STREAMLIGHT, INC.,
Patent Owner.

PGR2020-00062
Patent 10,378,702

Before LYNNE E. PETTIGREW, WESLEY B. DERRICK, and
MELISSA A. HAAPALA, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
JUDGMENT
Granting Request for Adverse Judgment Prior to Institution of Trial
37 C.F.R. § 42.73(b)

PGR2020-00062
Patent 10,378,702 B2
2
Petitioner, Parhelion, Inc., filed a Petition for Post Grant Review of
claims 1, 2, 5, 6, 8, 10–12, 15, 16, 18, 20–24, 26–28, and 31 of U.S. Patent
No. 10,378,702 B2 (“the ’702 patent”). Paper 1 (“Pet.”).
On August 13, 2020, following authorization by the Board, Patent
Owner, Streamlight, Inc., filed an “Unopposed Request for Entry of Adverse
Judgment Under 37 C.F.R. § 42.73(b)(2).” Paper 5 (“Request”). Patent
Owner represents that “Petitioner . . . does not oppose [Patent Owner’s]
request for [adverse] judgement.” Id. Patent Owner cites “business
considerations,” and “requests judgment against itself under 37 C.F.R.
§ 42.73(b)(2), and asks that the Board cancel claims 1, 2, 5, 6, 8, 10, 11, 12,
15, 16, 18, 20, 21, 22, 23, 24, 26, 27, 28, and 31 of the ’702 Patent.” Id.
Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment
against itself at any time during a proceeding. Cancellation or disclaimer of
one or more claims such that the patent owner has no remaining claim in the
trial suffices as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2).
The Board is permitted to enter adverse judgment at any time in a
proceeding, including prior to an institution decision. Cf. Arthrex, Inc. v.
Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018) (“37 C.F.R.
§ 42.73(b) permits the Board to enter an adverse judgment when a patent
owner cancels all claims at issue after an IPR petition has been filed, but
before an institution decision.”).
As claims 1, 2, 5, 6, 8, 10–12, 15, 16, 18, 20–24, 26–28, and 31 of the
’702 patent are the only claims challenged in this case, and Patent Owner
requests their cancellation, Patent Owner will have no remaining claims in
this case upon the requested cancellation. Under the circumstances of this
case, we determine that the grant of Patent Owner’s Unopposed Request for
PGR2020-00062
Patent 10,378,702 B2
3
Adverse Judgment is appropriate. Thus, we grant the request for adverse
judgment pursuant to 37 C.F.R. § 42.73(b).

Accordingly, it is
ORDERED that adverse judgment is entered against Patent Owner
pursuant to 37 C.F.R. § 42.73;
FURTHER ORDERED that claims 1, 2, 5, 6, 8, 10–12, 15, 16, 18,
20–24, 26–28, and 31 of the ’702 patent are cancelled; and
FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(d)(3),
Patent Owner is precluded from taking any action inconsistent with this
judgment, including obtaining any patent claim that is not patentably distinct
from a cancelled claim in this proceeding.

PGR2020-00062
Patent 10,378,702 B2
4
FOR PETITIONER:
Clinton Brannon
cbrannon@williamsmullen.com

Richard Matthews
rmatthews@williamsmullen.com

FOR PATENT OWNER:
Roger Herrell
rherrell@ddhs.com

Niels Haun
nhaun@ddhs.com

Clement Berard
cberard@ddhs.com