Wright Medical Technology, Inc.v.the University of North Carolina at Chapel Hill

Patent Trial and Appeal Board

Jun 30, 2015

10271635 (P.T.A.B. Jun. 30, 2015)

Trials@uspto.gov Paper No. 26
Tel: 571-272-7822 Entered: June 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

WRIGHT MEDICAL TECHNOLOGY, INC.,
Petitioner,

v.

THE UNIVERSITY OF NORTH CAROLINA,
Patent Owner.
_______________

Case IPR2014-00626
Patent 6,955,677 B2
_______________

Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and
ZHENYU YANG, Administrative Patent Judges.

YANG, Administrative Patent Judge.

JUDGMENT AND FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2014-00626
Patent 6,955,677 B2

2
On June 10, 2015, The University of North Carolina at Chapel Hill
(“Patent Owner”) filed, pursuant to Board authorization, a Notice of
Statutory Disclaimer Under 35 U.S.C. § 253 and Request for Termination.
Paper 24 (“Request”).
I. BACKGROUND
On October 7, 2014, the Board instituted a review of the patentability
of claims 1–4, 9, 18, 21–25, 28, 30, 31, 39–42, 54–57, 60, 62, 63, 71, and 72
of U.S. Patent No. 6,955,677 B2 (“the ’677 patent”). Paper 9. Oral hearing
was held on May 18, 2015. Paper 25. On May 21, 2015, Patent Owner
“filed a statutory disclaimer of the entire term of all of the claims in review.”
Paper 24; Ex. 2001. According to Patent Owner, “[b]ecause no challenged
claims remain, this Inter Parties Review should be terminated.” Id.
II. DISCUSSION
A party may request judgment against itself at any time during a
proceeding. 37 C.F.R. § 42.73(b). Under the Rules, actions construed as a
request for entry of adverse judgment include “[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). Here, Patent Owner has disclaimed, under
37 C.F.R. § 1.321, claims 1–4, 9, 18, 21–25, 28, 30, 31, 39–42, 54–57, 60,
62, 63, 71, and 72 of the ’677 patent, which constitute all claims involved in
this trial. Ex. 2001. We thus construe the statutory disclaimer as a request
for entry of adverse judgment.1

1 Patent Owner indicates that “Petitioner objects to termination of the IPR
proceedings.” Paper 24. This statement inaccurately reflects the Petitioner’s
position. During a conference call held on June 1, 2015, Petitioner stated it

IPR2014-00626
Patent 6,955,677 B2

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III. CONCLUSION
Having reviewed the statutory disclaimer and Patent Owner’s
Request, we determine that entry of judgment against Patent Owner with
respect to claims 1–4, 9, 18, 21–25, 28, 30, 31, 39–42, 54–57, 60, 62, 63, 71,
and 72 of the ’677 patent is appropriate.

ORDER
Accordingly, it is
ORDERED that adverse judgment is entered under 37 C.F.R.
§ 42.73(b) against Patent Owner with respect to claims 1–4, 9, 18, 21–25,
28, 30, 31, 39–42, 54–57, 60, 62, 63, 71, and 72 of the ’677 patent; and
FURTHER ORDERED that this Order constitutes a final written
decision under 35 U.S.C. § 318(a).

would not object to the entry of adverse judgment in this proceeding. See
Paper 23.
IPR2014-00626
Patent 6,955,677 B2

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FOR PETITIONER:

Samuel Apicelli
Jarrad Gunther
Christopher Kroon
DUANE MORRIS LLP
swapicelli@duanemorris.com
jmgunther@duanemorris.com
cskroon@duanemorris.com

FOR PATENT OWNER:

Joseph Zito
Benjamin Deming
DNL ZITO
jzito@dnlzito.com
bdeming@dnlzito.com

Paul Grandinetti
mail@levygrandinetti.com