`Tel: 571-272-7822
`
`
`Paper 19
`Entered: August 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GREAT WEST CASUALTY COMPANY, BITCO GENERAL
`INSURANCE CORPORATION, and
`BITCO NATIONAL INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`TRANSPACIFIC IP I LTD. and
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01912
`Patent 8,929,555 B2
`____________
`
`
`Before MICHAEL W. KIM, THOMAS L. GIANNETTI, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`JUDGMENT AND FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`IPR2015-01912
`Patent 8,929,555 B2
`
`
`BACKGROUND
`Petitioner requested inter partes review of claims 1, 7, and 13–15 of U.S.
`Patent No. 8,929,555 (“the ʼ555 patent”). Paper 1. The Board granted the Petition
`and instituted an inter partes review of all challenged claims. Paper 10. On June
`29, 2016, Patent Owner filed a Patent Owner’s Response and notified the Board of
`the filing of a Disclaimer under 37 C.F.R. § 1.321(a), disclaiming claims 1, 7, and
`13–15 of the ’555 patent. Paper 17. Patent Owner has filed a copy of the
`Disclaimer. Ex. 2001.
`
`DISCUSSION
`A party may request entry of adverse judgment against itself at any time
`during a proceeding. See 37 C.F.R. § 42.73(b). Here, Patent Owner has
`disclaimed all challenged claims such that Patent Owner has no remaining claim in
`the trial, which is construed as a request for adverse judgment. See 37 C.F.R.
`§ 42.73(b)(2). Under these circumstances, entry of judgment adverse to the Patent
`Owner is appropriate.
`
`
`CONCLUSION AND ORDER
`In view of the Disclaimer by Patent Owner of claims 1, 7, and 13–15 of the
`’555 patent, Patent Owner’s request for adverse judgment is granted.
`It is, therefore,
`ORDERED that adverse judgment against the Patent Owner is entered under
`37 C.F.R. § 42.73(b)(2);
`FURTHER ORDERED that this constitutes a final written decision under
`35 U.S.C. § 318(a).
`
`
` 2
`
`
`
`
`
`
`
`IPR2015-01912
`Patent 8,929,555 B2
`
`PETITIONER:
`Joseph A. Micallef
`Russell E. Cass
`Erik J. Carlson
`Vernon M. Winters
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`rcass@sidley.com
`ecarlson@sidley.com
`vwinters@sidley.com
`
`PATENT OWNER:
`Brenton R. Babcock
`Ted M. Cannon
`Scott Raevsky
`Bridget A. Smith
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2brb@knobbe.com
`2tmc@knobbe.com
`2sxr@knobbe.com
`2bzs@knobbe.com
`BoxPGL32@knobbe.com
`
` 3
`
`
`
`
`
`
`
`
`
`IPR2015-01912
`Patent 8,929,555 B2
`
`
`
`
` 4
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