General Electric Co. v. United Techs. Corp.

Trials@uspto.gov 	Paper 9
Tel: 571-272-7822 	Entered: July 6, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
GENERAL ELECTRIC COMPANY,
Petitioner,
v.
UNITED TECHNOLOGIES CORPORATION
AND MTU AERO ENGINES AG,
Patent Owner.
Case IPR2017-00491
Patent 8,517,668 B1
Before HYUN J. JUNG, MITCHELL G. WEATHERLY, and
GEORGE R. HOSKINS, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
DECISION
Not Instituting Inter Partes Review
35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
I. 	INTRODUCTION
A. BACKGROUND
General Electric Company (“GE”) filed a petition (Paper 1, “Pet.”) to
institute an inter partes review of claims 1–17 of U.S. Patent No. 8,517,668
B1 (Ex. 1001, “the ’668 patent”). 35 U.S.C. § 311. United Technologies

IPR2017-00491
Patent 8,517,668 B1
Corporation and MTU Aero Engines AG (collectively “Patent Owner”)
timely filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Institution
of an inter partes review is authorized by statute when “the information
presented in the petition filed under section 311 and any response filed under
section 313 shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108.
For the reasons described below, we decline to institute an inter partes
review of any claims.
B. RELATED P ROCEEDINGS
The parties indicate that the ’668 patent is related to a patent that was
at issue in Case IPR2016-00857, in which institution of inter partes review
was denied. Pet. 1; Prelim. Resp. 1; Paper 4, 1. The parties also indicate
that the ’668 patent is not involved in litigation. Pet. 2; Paper 4, 2.
II. 	ANALYSIS
Patent Owner states that it “strongly disagree[s] with Petitioner’s
unpatentability contentions.” Prelim. Resp. 1. Nevertheless, United
Technologies Corporation and MTU Aero Engines AG and MTU Aero
Engines AG have each filed a statutory disclaimer of claims 1–17 of the
’668 patent. Ex. 2001 (for United Technologies Corporation and MTU Aero
Engines AG); Ex. 2002 (for MTU Aero Engines AG).
Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory
disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this
chapter, disclaiming one or more claims in the patent” and “[n]o inter partes
review will be instituted based on disclaimed claims.” A disclaimer under
35 U.S.C. § 253(a) is “considered as part of the original patent” as of the
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IPR2017-00491
Patent 8,517,668 B1
date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a
disclaimer to be “recorded” in the Office, the document filed by the patent
owner must:
(1) Be signed by the patentee, or an attorney or agent of
record;
(2) Identify the patent and complete claim or claims, or
term being disclaimed. A disclaimer which is not a disclaimer of
a complete claim or claims, or term will be refused recordation;
(3) State 	the 	present 	extent 	of 	patentee’s 	ownership
interest in the patent; and
(4) Be accompanied by the fee set forth in [37 C.F.R.]
§ 1.20(d).
37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
1379, 1382 (Fed. Cir. 1998) (holding that § 253 disclaimer is immediately
“recorded” on date that Office receives disclaimer meeting requirements of
37 C.F.R. § 1.321(a) and that no further action is required in the Office).
Based on our review of Exhibits 2001 and 2002 and Office public
records, we conclude that a disclaimer of claims 1–17 of the ’668 patent
under 35 U.S.C. § 253(a) has been recorded in the Office as of April 12,
2017. Ex. 2001; Ex. 2002. Because all claims challenged by GE have been
disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R.
§ 1.321(a), no inter partes review is instituted in this proceeding. 37 C.F.R.
§ 42.107(e).
III. ORDER
For the reasons given, it is ORDERED that no inter partes review is
instituted for any claim challenged by GE.
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IPR2017-00491
Patent 8,517,668 B1
PETITIONER:
Anish Desai
Brian Ferguson
Christopher Pepe
W EIL GOTSHAL & M ANGES LLP
anish.desai@weil.com
brian.ferguson@weil.com
christopher.pepe@weil.com
GE.WGM.Service@weil.com
PATENT OWNER:
M. Andrew Holtman
C. Brandon Rash
Alyssa J. Holtslander
F INNEGAN , HENDERSON , F ARABOW , GARRETT & DUNNER L .L .P .
andy.holtman@finnegan.com
brandon.rash@finnegan.com
alyssa.holtslander@finnegan.com
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