Nelson Products, Inc.v.BAL SEAL ENGINEERING, INC.

Patent Trial and Appeal Board

May 19, 2015

13629433 (P.T.A.B. May. 19, 2015)

Trials@uspto.gov Paper 36
571-272-7822 Entered: May 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NELSON PRODUCTS, INC.,
Petitioner,
v.
BAL SEAL ENGINEERING, INC.,
Patent Owner.
_______________

Case IPR2014-00573
Patent 8,375,543 B1
_______________

Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

JUDGMENT
Request for Adverse Judgment
37 C.F.R. § 42.73
IPR2014-00573
Patent 8,375,543 B1

2
Introduction
On May 11, 2015, Bal Seal Engineering, Inc. (“Patent Owner”) filed,
pursuant to Board authorization, a Notice Regarding Filing of Statutory
Disclaimer Under 37 C.F.R. § 1.321 and Request for Judgment under 37
C.F.R. § 42.73(b). Paper 35 (“Notice”). Patent Owner also filed with the
Board a copy of the Statutory Disclaimer filed on May 4, 2015. Ex. 2015.
Nelson Products, Inc. (“Petitioner”) has not requested permission to file an
opposition.
Background
In the present proceeding, we instituted inter partes review of claims
1, 2, 5, 7, 10–12, and 19–29 of U.S. Patent No. 8,375,543 (“the ’543
patent”). Paper 9. Patent Owner, in the Notice, indicates that it is
“disclaiming all thirty (30) granted claims in the ‘543 patent.
Consequently, the entire remaining term of the ‘543 patent has been
dedicated to the public.” Notice 1. Patent Owner concludes that, because
“all thirty (30) claims of the ‘543 patent, including claims 1, 2, 5, 7, 10–12,
and 19–29 challenged in IPR2014-00573, have been disclaimed by the
Statutory Disclaimer, there is no remaining claim in the pending trial.” Id.
Judgment
Under 37 C.F.R. § 42.73(b), a party may request judgment against
itself at any time during a proceeding. Actions construed as a request for
entry of adverse judgment include “[d]isclaimer of the involved application
or patent” (37 C.F.R. § 42.73(b)(1)) and “[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 has disclaimed claims 1–30 under 37 C.F.R.
§ 1.321, which disclaimer includes all claims 1, 2, 5, 7, 10–12, and 19–29
IPR2014-00573
Patent 8,375,543 B1

3
on which trial was instituted in the present proceeding. Patent Owner also
expressly requested entry of adverse judgment against itself with respect to
claims 1, 2, 5, 7, 10–12, and 19–29. Notice 1.
We have reviewed Patent Owner’s Notice as filed, including Patent
Owner’s express request for entry of adverse judgment against itself, and
we acknowledge Patent Owner’s statutory disclaimer of claims 1–30 of the
’424 patent. Adverse judgment shall be entered and will terminate the
proceeding.
ORDER
Accordingly, it is:
ORDERED that adverse judgment is entered against Patent Owner
under 37 C.F.R. § 42.73(b); and
FURTHER ORDERED that this proceeding is terminated.

IPR2014-00573
Patent 8,375,543 B1

4
FOR PETITIONER:
Mei Tsang
Joseph Andelin
FISH & TSANG LLP
mtsang@fishiplaw.com
jandelin@fishiplaw.com
patents@fishiplaw.com

FOR PATENT OWNER:

Tom Dao
Glen L. Nuttall
KLEIN O’NEILL & SINGH, LLP
tdao@koslaw.com
gnuttall@koslaw.com