`571-272-7822
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` Paper No. 24
`Entered: February 10, 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 IPR2016-00156
`Patent 8,296,146 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`JUDGMENT
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`IPR2016-00156
`Patent 8,296,146 B2
`
`
`I.
`
`BACKGROUND
`
`On November 17, 2015, Petitioner, Volkswagen Group of America,
`Inc. (“Volkswagen”), filed a Petition requesting an inter partes review of
`claims 1, 10, 11, 17–19, 27, and 30 of U.S. Patent No. 8,296,146 B2
`(Ex. 1001, “the ’146 patent”). Paper 2. On May 13, 2016, we instituted an
`inter partes review as to all the challenged claims of the ’146 patent.
`Paper 7.
`On February 9, 2016, West View filed a Request for Adverse
`Judgment pursuant to 37 C.F.R. § 42.73(b). Paper 23 (“Mot.”). West View
`requests that we cancel all the challenged claims of the ’146 patent—claims
`1, 10, 11, 17–19, 27, and 30—and, as a consequence, enter adverse judgment
`against West View in this trial. Mot. 1. For the reasons discussed below, we
`grant West View’s Request for Adverse Judgment.
`
`
`II. DISCUSSION
`
`A party may request entry of adverse judgment against itself at any
`time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a
`request for adverse judgment include, among other things, cancellation or
`disclaimer of a claim such that the party has no remaining claim in the trial.
`37 C.F.R. § 42.73(b)(2). West View has requested that we cancel claims 1,
`10, 11, 17–19, 27, and 30, which are all of the challenged claims involved in
`this trial. Given that West View has no remaining claims in this trial, entry
`of adverse judgment against West View and cancellation of all of the
`challenged claims of the ’146 patent is appropriate.
`
`
`
`2
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`
`
`IPR2016-00156
`Patent 8,296,146 B2
`
`
`III. ORDER
`
`In consideration of the foregoing, it is
`ORDERED that West View’s Request for Adverse Judgement is
`GRANTED;
`ORDERED that adverse judgment is entered against West View with
`respect to claims 1, 10, 11, 17–19, 27, and 30 of the ’146 patent;
`FURTHER ORDERED that claims 1, 10, 11, 17–19, 27, and 30 of the
`’146 patent are cancelled1; and
`FURTHER ORDERED that, because this is a Final Written Decision,
`parties to this proceeding seeking judicial review of our decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`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).
`
`
`
`3
`
`
`
`IPR2016-00156
`Patent 8,296,146 B2
`
`For PETITIONER:
`Michael J. Lennon
`Clifford A. Ulrich
`Kenyon & Kenyon LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`
`For PATENT OWNER:
`
`Robert Gazdzinski
`Peter J. Gutierrez, III
`Derek Midkiff
`Gazdzinski & Associates, PC
`docket@gazpat.com
`
`
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`
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`4
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