Board of Regents, The University of Texas System

Patent Trials and Appeals Board

Jun 8, 2021

IPR2019-00407 (P.T.A.B. Jun. 8, 2021)

Trials@uspto.gov Paper 33
571-272-7822 Date: June 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ETHICON, INC.,
Petitioner,
v.
BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
Patent Owner.
____________
IPR2019-00407
Patent 7,033,603 B2

Before SUSAN L. C. MITCHELL, AVELYN M. ROSS,
KRISTI L. R. SAWERT, Administrative Patent Judges.
MITCHELL, Administrative Patent Judge.

JUDGMENT
Request for Adverse Judgment
37 C.F.R. § 42.73(b)

IPR2019-00407
Patent 7,033,603 B2

2
Ethicon, Inc. (“Petitioner”) filed a Petition (“Pet.”) to institute an inter
partes review of claims 1, 2, 6, 11, 13, and 19 of U.S. Patent No. 7,033,603
B2 (Ex. 1001, “the ’603 patent”). Paper 1. The Board of Regents, The
University of Texas System (“Patent Owner”) did not file a preliminary
response to the Petition.
On June 10, 2020, we instituted trial as to all challenged claims.
Paper 29. Patent Owner filed a Patent Owner Response stating that on
September 2, 2020, Patent Owner filed a statutory disclaimer in the Office
disclaiming all challenged claims of the ’603 patent. Paper 31, 3. Patent
Owner notes that no challenged claim remains in this proceeding, and
requests termination of the proceeding. Id. at 4. Patent Owner concludes
that “[p]ursuant to 37 C.F.R. § 42.73(b)(2), Patent Owner respectfully
requests the Board terminate IPR2019-00407 and enter judgment in the
IPR.” Id. at 5.
Under 35 U.S.C. § 253(a), a patentee may disclaim its whole interest
or any sectional interest in any patent claim. When a party in an inter partes
review disclaims all the claims at issue in the proceeding, we construe the
disclaimer as a request for adverse judgment. 37 C.F.R. 42.73(b)(1)–(2).
Because Patent Owner has explicitly requested adverse judgment against
itself pursuant to Rule 42.73(b)(2), and has statutorily disclaimed all claims
in the ’603 patent that were challenged in this proceeding, Patent Owner’s
request for adverse judgment is granted.
IPR2019-00407
Patent 7,033,603 B2

3
Accordingly, it is hereby:
ORDERED that judgment is herein entered against Patent Owner with
respect to claims 1, 2, 6, 11, 13, and 19 of the ’603 patent;
FURTHER ORDERED that the instant proceeding is terminated; and
FURTHER ORDERED that claims 1, 2, 6, 11, 13, and 19 of the ’603
patent are herein cancelled.

IPR2019-00407
Patent 7,033,603 B2

4
FOR PETITIONER:

Jeffrey S. Ginsberg
Andrew D. Cohen
Gregory L. Diskant
Eugene M. Gelernter
Patterson Belknap
PATTERSON BELKNAP WEBB & TYLER LLP
jginsberg@pbwt.com
acohen@pbwt.com
UTexasIPRs@pbwt.com

FOR PATENT OWNER:

Stephen R. Finch
Ross K. Krutsinger
FINCH & MALONEY, PLLC
sfinch@finchmaloney.com
rkrutsinger@finchmaloney.com