`Tel: 571.272.7822
`
`Paper 18
`Date Entered: November 1, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`T-MOBILE US, INC., T-MOBILE USA, INC., TELECOMMUNICATION
`SYSTEMS, INC., ERICSSON INC., AND
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`
`Case IPR2015-01708
`Patent 7,525,484 B2
`
`Before KEVIN F. TURNER, DAVID C. MCKONE, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`JUDGMENT
`Granting Request for Adverse Judgment After Institution of Trial
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-01708
`Patent 7,525,484 B2
`
`
`I. BACKGROUND
`T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication
`Systems, Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson
`(collectively, “Petitioner”) filed a Petition (Paper 1) to institute an inter
`partes review of claims 1, 2, 6, 24, 25, 51, 71, and 72 of U.S. Patent
`No. 7,525,484 B2 (Ex. 1002, “the ’484 patent”). TracBeam, LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 6). The parties reached
`agreement to remove claims 2, 6, 24, 71, and 72 from the proceeding; we
`accepted that agreement and limited this proceeding to claims 1, 25, and 51.
`Papers 7–9. Subsequently, we instituted an inter partes review of claims 1
`and 51 of the ’484 patent, but not claim 25. Paper 10.
`On August 19, 2016, in its Patent Owner Response (Paper 14), Patent
`Owner notified the Board that it had filed a statutory disclaimer under 37
`C.F.R. § 1.321(a) of claim 51 of the ’484 patent. See Ex. 2005 (statutory
`disclaimer). On October 31, 2016, Patent Owner notified the Board that it
`had filed a further statutory disclaimer of claim 1 of the ’484 patent, which
`constitutes the only remaining claim at issue in this inter partes review.
`Paper 17. Patent Owner also filed a copy of the disclaimer, as well as an
`electronic acknowledgement receipt of the filing, as Appendicies to the
`Notice. Id.
`
`
`II. DISCUSSION
`A party may request adverse judgment against itself at any time.
`See 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 at issue in this proceeding. See 37 C.F.R. § 42.73(b)(2). We
`
`2
`
`
`
`IPR2015-01708
`Patent 7,525,484 B2
`
`grant Patent Owner’s request and enter judgment against Patent Owner
`under 37 C.F.R. § 42.73(b). Our prior Order granting Petitioner’s request
`for oral hearing is hereby dismissed as moot. See Paper 16.
`
`
`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);
`FURTHER ORDERED that this constitutes a final written decision
`under 35 U.S.C. § 318(a); and
`FURTHER ORDERED that the previously granted oral hearing in this
`proceeding is dismissed as moot.
`
`
`
`3
`
`
`
`
`
`4
`
`IPR2015-01708
`Patent 7,525,484 B2
`
`
`FOR PETITIONER:
`Brian W. Oaks
`Douglas M. Kubehl
`Chad C. Walters
`Ross G. Culpepper
`BAKER BOTTS LLP
`brian.oaks@bakerbotts.com
`doug.kubehl@bakerbotts.com
`chad.walters@bakerbotts.com
`ross.culpepper@bakerbotts.com
`
`FOR PATENT OWNER:
`Sean A. Luner
`DOVEL AND LUNER, LLP
`sean@dovellaw.com
`
`Steven C. Sereboff
`SOCAL IP LAW GROUP LLP
`ssereboff@socalip.com
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