13161169 (P.T.A.B. May. 8, 2015)

Target Corporationv.Destination Maternity Corporation

Patent Trial and Appeal BoardMay 8, 2015

13161169 (P.T.A.B. May. 8, 2015)

Trials@uspto.gov Paper 86 571-272-7822 Entered: May 8, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ TARGET CORPORATION, Petitioner, v. DESTINATION MATERNITY CORPORATION, Patent Owner. Case IPR2013-005311 Patent RE43,563 E Before MICHAEL P. TIERNEY, LORA M. GREEN, JONI Y. CHANG, THOMAS L. GIANNETTI, JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and MITCHELL G. WEATHERLY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge GREEN. Opinion Dissenting-in-part filed by Administrative Patent Judge FITZPATRICK, in which Administrative Patent Judges, BISK and WEATHERLY, join. JUDGMENT Request for Adverse Judgment 37 C.F.R. § 42.73(b) 1 Case IPR2014-00508 has been joined with this proceeding. Case IPR2013-00531 Patent No. RE43,563 E 2 The Board instituted inter partes review of claims 1, 10–14, 16, and 20 of U.S. Patent No. RE43,563 E on February 14, 2014. Paper 10, 2. On February 12, 2015, inter parties review was instituted on claim 21 in IPR2014-00508 (“the ’508 IPR”), which proceeding was joined with the instant proceeding. The ’508 IPR, Paper 32, 1. On April 20, 2015, Patent Owner filed a Motion for Adverse Judgment, asking that the Board cancel all claims on which trial was instituted, i.e., claims 1, 10–14, 16, 20 and 21, and enter judgment against Patent Owner. Paper 85, 2. Patent Owner requested also that its Motion to Amend be withdrawn. Id. Under 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 is construed to be a request for adverse judgment. 37 C.F.R. § 42.73(b)(2). Patent Owner has not only requested cancellation of all claims on which trial was instituted in this inter partes review, such that after the cancellation it will have no remaining claim in the trial, but has also expressly requested entry of adverse judgment. Accordingly, it is hereby ORDERED that Patent Owner’s request to withdraw its Motion to Amend (Paper 25 (redacted) and Paper 26 (under seal)) is granted; FURTHER ORDERED that Patent Owner’s Motion for Adverse Judgment is granted; FURTHER ORDERED that Patent Owner’s request that claims 1, 10– 14, 16, 20 and 21 of U.S. Patent No. RE43,563 E be cancelled is granted; FURTHER ORDERED that IPR2013-00531 and IPR2014-00508 are hereby terminated; and Case IPR2013-00531 Patent No. RE43,563 E 3 FURTHER ORDERED that a copy of this Decision be entered into the file of Case IPR2014-00508. Case IPR2013-00531 Patent No. RE43,563 E 4 Opinion Dissenting-in-part filed by Administrative Patent Judge FITZPATRICK, in which BISK and WEATHERLY, Administrative Patent Judges, join. Claim 21 would not be before us but for a prior decision granting rehearing, which ultimately resulted in institution of an inter partes review of claim 21 based on a petition filed in IPR2014-00508 and joinder of that inter partes review with IPR2014-00531. See Papers 28, 31, and 32 in IPR2014-00508. For the reasons we previously set forth in our dissents from the decisions granting rehearing, institution, and joinder (i.e., Papers 28, 31, and 32 in IPR2014-00508), claim 21 is not properly before us. We respectfully dissent-in-part from the majority opinion supra, as it pertains to claim 21. For Petitioner: R. Trevor Carter trevor.carter@faegrebd.com Daniel Lechleiter daniel.lechleiter.ptab@faegrebd.com For Patent Owner: Paul Taufer paul.taufer@dlapiper.com Michael Burns michael.burns@dlapiper.com Stuart Pollack stuart.pollack@dlapiper.com

Target Corporation v. Destination Maternity Corporation