`571-272-7822
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` Paper No. 24
`Entered: February 11, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00125
`Patent 8,290,778 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`JUDGMENT
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`IPR2016-00125
`Patent 8,290,778 B2
`
`
`I.
`
`BACKGROUND
`
`On November 17, 2015, Petitioner, Volkswagen Group of America,
`
`Inc. (“Volkswagen”), filed a Petition requesting an inter partes review of
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`claims 1, 3, 5, 8, 9, 22, 27, 28, and 30 (“the challenged claims”) of U.S.
`
`Patent No. 8,290,778 B2 (Ex. 1001, “the ’778 patent”). Paper 2. Patent
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`Owner, West View Research, LLC (“West View”), did not file a Preliminary
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`Response. On May 13, 2016, we instituted an inter partes review as to the
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`challenged claims of the ’778 patent. Paper 8.
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`On February 9, 2016, West View filed a Request for Adverse
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`Judgment pursuant to 37 C.F.R. § 42.73(b). Paper 23 (“Mot.”). West View
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`requests that we cancel the challenged claims of the ’778 patent and, as a
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`consequence, enter adverse judgment against West View in this trial.
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`Mot. 1. For the reasons discussed below, we grant West View’s Request for
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`Adverse Judgment.
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`II. DISCUSSION
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`A party may request entry of adverse judgment against itself at any
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`time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a
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`request for adverse judgment include, among other things, cancellation or
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`disclaimer of a claim such that the party has no remaining claim in the trial.
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`37 C.F.R. § 42.73(b)(2). West View requests that we cancel claims 1, 3, 5,
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`8, 9, 22, 27, 28, and 30, which are all of the challenged claims involved in
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`this trial. Given that no challenged claims remain in this trial, entry of
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`adverse judgment against West View and cancellation of the challenged
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`claims of the ’778 patent is appropriate.
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`
`
`
`
`2
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`
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`IPR2016-00125
`Patent 8,290,778 B2
`
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`III. ORDER
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`In consideration of the foregoing, it is
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`ORDERED that West View’s Request for Adverse Judgement is
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`GRANTED;
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`ORDERED that adverse judgment is entered against West View with
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`respect to claims 1, 3, 5, 8, 9, 22, 27, 28, and 30 of the ’778 patent;
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`FURTHER ORDERED that claims 1, 3, 5, 8, 9, 22, 27, 28, and 30 of
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`the ’778 patent are cancelled1; and
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`FURTHER ORDERED that, because this is a Final Written Decision,
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`parties to this proceeding seeking judicial review of our decision must
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`comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`
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`1 See 37 C.F.R. § 42.80 (indicating that after the Board issues a final written
`decision in an inter partes patent review proceeding, the Office will issue
`and publish a certificate canceling any claim of the patent finally determined
`to be unpatentable).
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`
`
`3
`
`
`
`4
`
`IPR2016-00125
`Patent 8,290,778 B2
`
`For PETITIONER:
`Michael J. Lennon
`Clifford A. Ulrich
`Kenyon & Kenyon LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`
`
`
`For PATENT OWNER:
`Peter J. Gutierrez, III
`Kim H. Leung
`Mark Wang
`Gazdzinski & Associates, PC
`docket@gazpat.com
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`