`Tel: 571-272-7822
`
`
`Paper 9
`Entered: February 26, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`ABB INC.
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`_______________
`
`Case IPR2014-00122
`Patent 6,941,543
`_______________
`
`
`
`Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and JEREMY M.
`PLENZLER, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
` JUDGMENT AND FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`
`
`
`
`IPR2014-00122
`Patent 6,941,543
`
`
`BACKGROUND
`
`The petition seeks inter partes review of claims 5-16 of U.S.
`
`Patent 6,941,543. Paper 1. On February 18, 2014, Patent Owner filed a
`
`preliminary response. Paper 6. Patent Owner’s response states that the ʼ543 patent
`
`is set to expire in May 2015. Id. at 2. For this and other reasons, Patent Owner
`
`cancels the claims of the ʼ543 patent challenged in the petition. Id. at 4.
`
`Petitioner requested a conference call with Board to discuss this. A call was
`
`held on February 24, 2014. Respective counsel for the parties and Judges Bisk,
`
`Plenzler, and Giannetti participated.
`
`Patent Owner indicated that in view of the cancellation of all challenged
`
`claims, Patent Owner requests that adverse judgment be entered under 37 C.F.R.
`
`§ 42.73(b).
`
`DISCUSSION
`
`A party may request entry of adverse judgment against itself at any time
`
`during a proceeding. 37 C.F.R. § 42.73(b). Here, Patent Owner has cancelled each
`
`claim for which inter partes review is sought. Paper 6 at 4. Under these
`
`circumstances, the entry of judgment adverse to the Patent Owner and cancellation
`
`of the claims as requested is appropriate.
`
`During the call, Petitioner requested guidance on seeking a refund of the fees
`
`paid to the USPTO. Petitioner is directed to FAQ E7 under Trials - Frequently
`
`Asked Questions on the Board’s web site
`
`(www.uspto.gov/ip/boards/bpai/index.jsp).
`
`Patent Owner’s request for entry of adverse judgment is granted.
`
`CONCLUSION
`
`It is, therefore,
`
` 2
`
`
`
`
`
`
`
`
`
`IPR2014-00122
`Patent 6,941,543
`
`
`ORDERED that adverse judgment against the Patent Owner is entered 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 claims 5-16 of U.S. Patent 6,941,543 are hereby
`
`CANCELLED.
`
`
`
`
`
` 3
`
`
`
`
`
`
`
`IPR2014-00122
`Patent 6,941,543
`
`
`For PETITIONER:
`
`Richard D. McLeod
`KLARQUIST SPARKMAN LLP
`Email: rick.mcleod@klarquist.com
`
`Steven Auvil
`SQUIRE SANDERS LLP
`Steven.auvil@squiresanders.com
`
`
`
`For PATENT OWNER:
`
`Richard T. Black
`FOSTER PEPPER PLLC
`Email: blacr@foster.com
`
`Douglas R. Wilson
`HEIM, PAYNE & CHORUSH LLP
`Email: dwilson@hpcllp.com
`
`
`
` 4
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