ARTHREX, INC., v BONUTTI SKELETAL INNOVATIONS, LLC

Patent Trials and Appeals Board

May 6, 2014

12359364 - (D) (P.T.A.B. May. 6, 2014)

Trials@uspto.gov Paper 15
Tel: 571-272-7822 Entered: May 6, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ARTHREX, INC.,
Petitioner,
v.
BONUTTI SKELETAL INNOVATIONS, LLC,
Patent Owner.

Case IPR2013-00633
Patent 8,147,514

Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
JUDGMENT
Request for Adverse Judgment
37 C.F.R. § 42.73(b)(2)
Case IPR2013-00633
Patent 8,147,514
2
I. INTRODUCTION
On April 23, 2014, Patent Owner, Bonutti Skeletal Innovations LLC
(“Bonutti”), filed a Notice of Filing of Disclaimer Under 37 C.F.R.
§ 1.321(a). Paper 14. On April 22, 2014, Bonutti completely disclaimed
claims 1-31 in U.S. Patent No. 8,147,514 (the “’514 patent”). Ex. 2002.
Bonutti’s action constitutes a disclaimer of all claims challenged in this inter
partes review such that it has no remaining claim in the trial. Bonutti
contends that “the Inter Partes Review should be terminated pursuant to 37
CFR 42.73(b)(2).” Paper 14, 2.
II. DISCUSSION
Under 35 U.S.C. § 42.73(b), “a party may request judgment against
itself at any time during a proceeding.” We interpret Bonutti’s cancellation
of claims such that it has no remaining claim in the trial to be a request for
adverse judgment. 37 C.F.R. § 42.73(b)(2). Accordingly, we determine that
Bonutti’s disclaimer of claims 1-31 of the ’514 patent meets the conditions
for termination of this review and entry of judgment against Bonutti.
III. ORDER
For the reasons stated above, it is:
ORDERED that judgment is entered against Bonutti with respect to
claims 1-31 of the U.S. Patent No. 8,147,514.
Case IPR2013-00633
Patent 8,147,514
3
PETITIONER:
Anthony P. Cho
Todd W. Barrett
CARLSON, GASKEY & OLDS, P.C.
acho@cgolaw.com
tbarrett@cgolaw.com
PATENT OWNER:
Cary Kappel
William Gehris
DAVIDSON, DAVIDSON & KAPPEL, LLC
ckappel@ddkpatent.com
wgehris@ddkpatent.com