`571-272-7822
`
`Paper 30
`Entered: March 21, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA,
`Petitioner,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Case IPR2016-01063
`Patent 8,717,166 B2
`__________________________
`
`Before WILLIAM V. SAINDON, CARL M. DeFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Patent Owner’s Request for Adverse Judgment After Institution of Trial
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`
`Case IPR2016-01063
`Patent 8,717,166 B2
`
`
`We instituted inter partes review of claims 1–10, 13–16, and 19–25
`(“the Instituted Claims”) of U.S. Patent No. 8,717,166 B2 (“the ’166
`patent”) on November 29, 2016. Paper 20. On March 2, 2017, Patent
`Owner PerdiemCo LLC (“Patent Owner”) filed its Response, in which
`Patent Owner stated:
`
`Patent Owner has filed a statutory disclaimer under 37
`CFR § 1.321 disclaiming claims 1–10, 13–16, and 19–25 of the
`’166 patent. . . . In view of that filing, Patent Owner requests an
`adverse judgment under 37 CFR § 42.73(b)(2) against Patent
`Owner for claims 1–10, 13–16, and 19–25 of the ’166 patent.
`
`Accordingly, Patent Owner believes such adverse
`judgment should be entered and, as there is no remaining claim
`in this trial, this IPR should be terminated.
`Paper 28.
`A patent owner may request judgment against itself “at any time
`during a proceeding” upon disclaimer of the particular claims at issue such
`that there is “no remaining claim in the trial.”1 37 C.F.R. § 42.73(b)(2).
`Here, Patent Owner has statutorily disclaimed all of the claims on which trial
`was instituted; hence, no claims will remain for trial. Paper 28 and Exhibit
`2011. In view of the disclaimer of the Instituted Claims of the ’166 patent,
`the entry of final judgment adverse to Patent Owner is appropriate.
`
`
`
`1 Patent Owner also stated in its Response that “Patent Owner’s request to
`file a motion for adverse judgment is therefore forthcoming.” Paper 28.
`Because our rules permit a request for adverse judgment “at any time,”
`however, a party need not obtain prior authorization. 35 U.S.C. § 42.73(b).
`2
`
`
`
`
`
`Case IPR2016-01063
`Patent 8,717,166 B2
`
`
`ORDER
`
`Accordingly, it is hereby
`
`ORDERED that Patent Owner PerdiemCo LLC’s request for adverse
`judgment is granted;
`
`FURTHER ORDERED that judgment against Patent Owner
`PerdiemCo LLC, pursuant to 37 C.F.R. § 42.73(b)(2), is entered;
`
`FURTHER ORDERD that this decision constitutes a final written
`decision under 35 U.S.C. § 318(a);
`
`FURTHER ORDERED that Patent Owner PerdiemCo LLC shall file
`a notice and copy of this final judgment and decision in the files of pending
`Patent Application Nos. 14/629,347 and 15/200,592, as well as any other
`proceeding or action claiming priority to Provisional Patent App. No.
`60/752,879; and
`
`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(d)(3),
`Patent Owner PerdiemCo LLC shall not take any action inconsistent with
`this final judgment and decision, including obtaining in any patent a claim
`that is not patentably distinct from the statutorily disclaimed claims in this
`proceeding.
`
`3
`
`
`
`
`
`Case IPR2016-01063
`Patent 8,717,166 B2
`
`PETITIONER:
`
`
`Vivek Ganti
`Sharad Bijanki
`HILL, KERTSCHER & WHARTON, LLP
`vg@hkw-law.com
`perdiemIPR@hkw-law.com
`
`PATENT OWNER:
`
`Alan Whitehurst
`Marissa R. Ducca
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
`PERDIEM-IPR@quinnemanuel.com
`
`Robert Babayi
`VECTOR IP LAW GROUP
`robert@vectoriplaw.com
`
`4
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
