P2i Ltd.

Patent Trials and Appeals Board

Jul 7, 2021

IPR2020-01198 (P.T.A.B. Jul. 7, 2021)

Trials@uspto.gov
Tel: 571-272-7822
Paper 15
Entered: July 7, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
FAVORED TECH CORPORATION,
Petitioner,
v.
P2I LTD.,
Patent Owner.
IPR2020-01198
Patent 10,421,876 B2
Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER,
and JEFFREY W. ABRAHAM, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
JUDGMENT
Granting Request for Adverse Judgment After Institution of Trial
37 C.F.R. § 42.73(b)
IPR2020-01198
Patent 10,421,876 B2

2

Favored Tech Corporation (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting an inter partes review of claims 1–15 of U.S. Patent
No. 10,421,876 B2 (Ex. 1001, “the ’876 patent”). P2i Ltd. (“Patent Owner”)
filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With our
authorization, Petitioner filed a Reply (Paper 7), and Patent Owner filed a
Sur-Reply (Paper 8). We determined that Petitioner had demonstrated a
reasonable likelihood that it would prevail with respect to at least one
challenged claim; accordingly, we instituted inter partes review of all
challenged claims on all asserted grounds. Paper 9.
After we instituted review, Patent Owner statutorily disclaimed
claims 1–15 of the ’876 patent. Ex. 2004. Patent Owner also filed a Notice
alerting us to the statutory disclaimer and requesting that we terminate the
inter partes review under 37 C.F.R. § 42.72. Paper 11. With our
authorization, Patent Owner filed a motion seeking termination of this
proceeding under Rule 42.72 (Paper 12), arguing that the alternative course
of entering adverse judgment under Rule 42.73 would be inappropriate.
Petitioner filed an opposition seeking entry of adverse judgment against
Patent Owner under Rule 42.73 (Paper 13) and arguing that Patent Owner’s
arguments for termination instead were unpersuasive.
Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without
rendering a final written decision, where appropriate, including where the
trial is consolidated with another proceeding or pursuant to a joint request
under 35 U.S.C. 317(a) or 327(a).” In this case, there is no
“consolidat[ion] . . . or a joint request under 35 U.S.C. 317(a) or 327(a),” so
the application of § 42.72 here is unclear.
IPR2020-01198
Patent 10,421,876 B2

3
Petitioner’s arguments for the application of § 42.73 are more
persuasive. The Board construes an action cancelling or disclaiming claims
such that no challenged claims remain in the trial as a request for adverse
judgment. 37 C.F.R. § 42.73(b)(2) (“Actions construed to be a request for
adverse judgment include . . . [c]ancellation or disclaimer of a claim such
that the party has no remaining claim in the trial.”); see also McAfee, Inc. v.
CAP Co., Ltd., IPR2016-00211, Paper 19 (PTAB Apr. 5, 2017) (entering
adverse judgment based on motion to amend seeking cancellation of claims
remaining in the trial). In this case, the Board instituted trial on claims 1–15
of the ’876 patent, none of which remains in the trial following Patent
Owner’s statutory disclaimer. Ex. 2004, 1 (disclaiming claims 1–15).
Accordingly, we construe Patent Owner’s disclaimer as a request for adverse
judgment, and we grant that request.
ORDER
It is hereby
ORDERED that Patent Owner’s motion to terminate this proceeding
under 37 C.F.R. § 42.72 is denied; and
FURTHER ORDERED that adverse judgment is hereby entered
against Patent Owner pursuant to 37 C.F.R. § 42.73(b)(2) with respect to
claims 1–15 of U.S. Patent No. 10,421,876 B2.

IPR2020-01198
Patent 10,421,876 B2

4
For PETITIONER:
Andrew T. Dufresne
Han-Wei Chen
Nathan K. Kelley
Mengke Xing
PERKINS COIE LLP
dufresne-ptab@perkinscoie.com
chen-ptab@perkinscoie.com
kelley_nathan-ptab@perkinscoie.com
xing-ptab@perkinscoie.com

For PATENT OWNER:
Paul B. Henkelmann
Timothy P. Maloney
FITCH, EVEN, TABIN & FLANNERY LLP
PHenkelmann@fitcheven.com
Tpmalo@fitcheven.com