`571.272.7822
`
`
`
`
`
`Paper 11
`Entered: July 18, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA
`CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2016-01677
`Case IPR2016-01678
`Patent RE43,106 E1
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Granting Patent Owner’s Motion for Adverse Judgment
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)(2)
`
`
`1 We exercise our discretion to issue one Decision to be filed in each case.
`The parties, however, are not authorized to use this style heading in
`subsequent papers.
`
`
`
`
`
`
`
`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`
`DISCUSSION
`I.
`On May 30, 2017, Toshiba Samsung Storage Technology Korea
`Corporation (“Patent Owner”), filed motions for adverse judgment pursuant
`to 37 C.F.R § 42.73(b)(2) in Cases IPR2016-01677 and IPR2016-01678.
`Paper 12 (IPR2016-01677); Paper 10 (IPR2016-01678). Specifically,
`Petitioner requests cancellation of claims 4‒6, 20‒27, and 36‒54 of U.S.
`Patent No. RE43,106 (Ex. 1001, “the ’106 patent”). Id. Patent Owner
`asserts that “[c]ancellation of these claims results in no claims remaining in
`inter partes review” Cases IPR2016-01677 and IPR2016-01678. Id.
`A party may request entry of adverse judgment against itself at any
`time during a proceeding. See 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R.
`§ 42.73(b), “[c]ancellation or disclaimer of a claim such that the party has no
`remaining claim in the trail” is one of at least four actions construed as a
`request for adverse judgment. We grant Patent Owner’s motions
`for adverse judgment.
`
`II. ORDER
`
`It is therefore
`ORDERED that Patent Owner’s motions for adverse judgment are
`granted;
`ORDERED that claims 4‒6, 20‒27, and 36‒54 of U.S. Patent No.
`RE43,106 are canceled;2
`
`
`2 See 37 C.F.R. § 42.80 (explaining that, after the Board issues a final
`written decision in an inter partes review proceeding, the Office will issue
`and publish a certificate canceling any claim of the patent finally determined
`to be unpatentable).
`
`2
`
`
`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`
`FURTHER ORDERED that adverse judgment be entered against
`Toshiba Samsung Storage Technology Korea Corporation in Cases
`IPR2016-01677 and IPR2016-01678; 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.
`
`
`
`For PETITIONER:
`Brian A. Tollefson
`Soumya Panda
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`btollefson@rfem.com
`spanda@rfem.com
`
`
`For PATENT OWNER:
`Joseph A. Rhoa
`Jonathan Roberts
`NIXON & VANDERHYE P.C.
`ar@nixonvan.com
`jr@nixonvan.com
`
`
`
`3
`
`
`
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