`571-272-7822
`
`
`
`
`
`
`
`
` Paper 24
`
`
`
` Entered: November 21, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` GOOGLE INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
` IXI MOBILE (R&D) LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01669
`Patent 7,552,124 B2
`____________
`
`
`Before BRYAN F. MOORE, TREVOR M. JEFFERSON, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`JUDGMENT
`Termination of the Proceeding and Lifting of
`Stay of Reexamination Control No. 90/013,988
`35 U.S.C. § 318(a), 37 C.F.R. §§ 42.73, and 42.122(a)
`
`
`
`
`
`IPR2016-01669
`Patent 7,552,124 B2
`
`
`
`I.
`INTRODUCTION
`Petitioner, Google Inc., filed a Petition for inter partes review of
`claims 1–10 of U.S. Patent No. 7,552,124 B2 (Ex. 1001, “the ’124 patent”).
`Paper 1. On March 8, 2017, the Board instituted trial to review the
`patentability of claims 1–5. Paper 9.
`On November 9, 2017, Patent Owner filed a Request for Adverse
`Judgement. Paper 23.
`
`II. DISCUSSION
`A. Adverse Judgment
`A party may request adverse judgment against itself at any time.
`37 C.F.R. § 42.73(b). In its Request for Adverse Judgment, Patent Owner
`states that it “hereby abandons the contest pursuant to 37 C.F.R.
`§ 42.73(b)(4) and requests cancellation of the instituted claims.” Paper 23.
`There is no pending motion to amend claims. Petitioner has entered no
`objection to the Request for Adverse Judgment. Under these circumstances,
`we determine that entry of judgment against Patent Owner with respect to
`claims 1–5 of the ’124 patent is appropriate.
`B. Reexamination Stay
`On October 12, 2017, we entered an Order (Paper 21) staying
`Reexamination Control No. 90/013,988 (’988 Reexam), which involves
`claims of the ’124 patent not at issue in this inter partes review. In that
`order, we denied a request to terminate the ’988 Reexam noting “[t]his
`decision not to terminate the Reexam may be revisited at a later date.” Paper
`21, 6.
`
`2
`
`
`
`IPR2016-01669
`Patent 7,552,124 B2
`
`
`
`We determine in this proceeding that claims 1–5 of the ’124 patent are
`unpatentable due to a request for adverse judgment. As noted in the Order,
`the reexamination is based on the same prior art presented in this proceeding
`but involves existing claims (claims 6–10) and several added claims (claims
`11–71) that are not involved in this proceeding. Paper 21, 3, 6. Under the
`circumstances, we determine that the stay of the ’988 Reexam should be
`lifted and the ’988 Reexam will not be terminated.
`III. ORDER
`
`Accordingly, it is
`ORDERED that adverse judgment is entered under 37 C.F.R.
`§ 42.73(b) against Patent Owner with respect to claims 1–5 of the ’124
`patent. Claims 1–5 are unpatentable and shall be cancelled1;
`FURTHER ORDERED that the stay of Reexamination Control No.
`90/013,988 is hereby lifted; and
`FURTHER ORDERED that all time periods in Reexamination
`Control No. 90/013,988 are restarted.
`
`
`
`
`
`1 See 37 C.F.R. § 42.80 (“After the Board issues a final written decision in
`an inter partes review . . . , the Office will issue and publish a certificate
`canceling any claim of the patent finally determined to be
`unpatentable . . . .”)
`
`3
`
`
`
`IPR2016-01669
`Patent 7,552,124 B2
`
`
`PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Daniel Zeilberger
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`danielzeilberger@paulhastings.com
`arvindjairam@paulhastings.com
`
`PATENT OWNER:
`
`Andy H. Chan
`Charles F. Koch
`Griffin Mesmer
`Andrew W. Schultz
`PEPPER HAMILTON LLP
`chana@pepperlaw.com
`kochc@pepperlaw.com
`mesmerg@pepperlaw.com
`schultza@pepperlaw.com
`
`
`
`4
`
`
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