`Tel: 571-272-7822
`
`
`
`Paper No. 20
`Entered: January 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`ZKEY INVESTMENTS, LLC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01278
`Patent 6,820,204 B1
`_______________
`
`
`Before ROBERT J. WEINSCHENK, MINN CHUNG,
`and CHRISTA P. ZADO, Administrative Patent Judges.
`
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`ORDER
`Motion to Amend Claims
`37 C.F.R. § 42.121
`
`
`
`
`
`
`
`IPR2017-01278
`Patent 6,820,204 B1
`
`
`
`
`
`
`A conference call in the above proceeding was held on January 22,
`2018, among respective counsel for the parties and Judges Weinschenk,
`Chung, and Zado. Patent Owner requested the conference call to satisfy the
`“conferring with the Board” requirement of 37 C.F.R. § 42.121(a) with
`regard to the filing of a motion to amend claims. In particular, Patent Owner
`seeks to cancel claims 1–3 and 16 of U.S. Patent No. 6,820,204 B1 (“the
`’204 patent”), all claims on which we instituted inter partes review, thereby
`disposing of this proceeding. Petitioner does not oppose Patent Owner.
`Patent Owner has satisfied the requirement of “conferring with the Board”
`prior to filing a motion to amend the ’204 patent.
`Patent Owner is also directed to 37 C.F.R. § 42.73, which provides
`that “[a] party may request judgment against itself at any time during a
`proceeding.” Concurrent with filing a motion to amend claims to cancel all
`claims pending in this proceeding, Patent Owner should file a request for
`adverse judgment, not to exceed five (5) pages, on grounds of cancellation
`of claims so that no claims remain in this proceeding.
`Accordingly, it is
`ORDERED that Patent Owner has satisfied the requirement of
`“conferring with the Board” pursuant to 37 C.F.R. § 42.121(a).
`
`
`
`2
`
`
`
`
`
`
`
`IPR2017-01278
`Patent 6,820,204 B1
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`
`
`PATENT OWNER:
`
`Michael F. Heim
`HEIM, PAYNE & CHORUSH, LLP
`mheim@hpcllp.com
`
`3
`
`
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