IPR2020-01217 (P.T.A.B. Apr. 28, 2021)

Ultratec, Inc.

Patent Trials and Appeals BoardApr 28, 2021

IPR2020-01217 (P.T.A.B. Apr. 28, 2021)

Trials@uspto.gov Paper 11 571-272-7822 Date: April 28, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CAPTIONCALL, LLC, Petitioner, v. ULTRATEC, INC., Patent Owner. IPR2020-01217 Patent 10,587,751 B2 Before LYNNE E. PETTIGREW, NATHAN A. ENGELS, and SCOTT B. HOWARD, Administrative Patent Judges. ENGELS, Administrative Patent Judge. JUDGMENT Granting Request for Entry of Adverse Judgment After Institution of Trial 37 C.F.R. § 42.73(b) IPR2020-01217 Patent 10,587,751 B2 2 I. INTRODUCTION Petitioner, CaptionCall, LLC, filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1, 2, 4–6, 8–22, and 27 of U.S. Patent No. 10,587,751 B2 (Ex. 1001, “the ’751 patent”). Patent Owner, Ultratec, Inc., did not file a Preliminary Response. We instituted inter partes review of all challenged claims on all asserted grounds. Paper 6. After institution, Patent Owner notified the Board that it filed a statutory disclaimer under 37 C.F.R. § 1.321(a) of claims 1, 2, 4–6, 8–22, and 27 of the ’751 patent, which constitute all of the claims at issue in this inter partes review. Paper 9. Patent Owner also filed a copy of the disclaimer. Ex. 2001. Having disclaimed all challenged claims, Patent Owner filed a Request for Entry of Adverse Judgment. Paper 9. II. DISCUSSION A party may request adverse judgment against itself at any time. 37 C.F.R. § 42.73(b). Here, Patent Owner requests adverse judgment because no claims remain in the trial after Patent Owner’s disclaimer of all the claims challenged in this proceeding. Paper 9, 2; see 37 C.F.R. § 42.73(b)(2). We grant Patent Owner’s request and enter judgment against Patent Owner under 37 C.F.R. § 42.73(b). III. ORDER Accordingly, it is: ORDERED that Patent Owner’s request for adverse judgment is granted, and judgment is entered against Patent Owner under 37 C.F.R. § 42.73(b) with respect to claims 1, 2, 4–6, 8–22, and 27 of the ’751 patent. IPR2020-01217 Patent 10,587,751 B2 3 FOR PETITIONER: Adam Smoot John Gadd Brian Parke asmoot@mabr.com jgadd@mabr.com bparke@mabr.com FOR PATENT OWNER: Michael Jaskolski Martha Snyder Michael.jaskolski@quarles.com Martha.snyder@quarles.com