`571-272-7822
`
`
`
`
`
` Paper No. 23
`Entered: February 22, 2017
`
`
`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 IPR2016-00146
`Patent 8,719,038 B1
`_______________
`
`
`
`Before MICHAEL R. ZECHER, KEVIN W. CHERRY, and
`JASON J. CHUNG, 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)
`
`
`
`
`
`
`
`IPR2016-00146
`Patent 8,719,038 B1
`
`
`I.
`
`BACKGROUND
`
`On November 17, 2015, Petitioner, Volkswagen Group of America,
`Inc. (“Volkswagen”), filed a Petition requesting an inter partes review of
`claims 1, 4, 5, 12, 16, 22, 54, and 66 of U.S. Patent No. 8,719,038 B1
`(Ex. 1001, “the ’038 patent”). Paper 2. Patent Owner, West View Research
`LLC (“West View”), filed a Preliminary Response. Paper 6. Patent Owner
`also filed a Statutory Disclaimer disclaiming claims 1, 4, 16, and 22 of the
`’038 patent. Prelim. Resp. 21; Ex. 2007. On May 13, 2016, we instituted an
`inter partes review as to the remaining challenged claims of the
`’038 patent—claims 5, 12, 54, and 66. Paper 8.
`On February 9, 2016, West View filed a Request for Adverse
`Judgment pursuant to 37 C.F.R. § 42.73(b). Paper 21 (“Mot.”). West View
`requests that we cancel the remaining challenged claims of the ’038 patent—
`claims 5, 12, 54, and 66, the only claims we instituted trial on—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 5,
`12, 54, and 66, which are all of the remaining challenged claims involved in
`
`
`
`2
`
`
`
`IPR2016-00146
`Patent 8,719,038 B1
`
`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 ’038 patent is appropriate.
`
`
`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 5, 12, 54, and 66 of the ’038 patent;
`FURTHER ORDERED that claims 5, 12, 54, and 66 of the ’038
`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
`
`
`
`IPR2016-00146
`Patent 8,719,038 B1
`
`For PETITIONER:
`
`Michael J. Lennon
`Clifford A. Ulrich
`Kenyon & Kenyon LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`
`For PATENT OWNER:
`
`Peter J. Gutierrez, III
`Mark Wang
`Gazdzinski & Associates, PC
`docket@gazpat.com
`
`
`
`
`
`
`
`4
`
`
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