`Trials@uspto.gov
`571-272-7822 Entered: August 1, 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.
`
`
`
`JUDGMENT
`Granting Request for Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`IPR2017-01278
`Patent 6,820,204 B1
`
`In the Petition, Facebook, Inc. (“Petitioner”) requested inter partes
`review of claims 1–5, 8–11, 16, and 17 of U.S. Patent No. 6, 820, 204 B1
`(“the ’204 patent”). Paper 2, 1. On October 30, 2017, we instituted inter
`partes review of some, but not all, claims challenged by Petitioner regarding
`the ’204 patent. Paper 9. In particular, we instituted inter partes review of
`claims 1–3, and 16 of the ’204 patent, but we did not institute review of
`claims 4, 5, 8–11, and 17. Id. at 30–31. On January 22, 2017, ZKey
`Investments, LLC (“Patent Owner”) filed a Motion to Amend [Claims]
`Pursuant to 37 C.F.R. § 42.121 in which Patent Owner sought to cancel
`claims 1–3 and 16. Paper 19. Patent Owner also filed a Request for
`Adverse Judgment as to Instituted Claims 1–3 and 16, on January 24, 2017.
`Paper 21. On February 16, 2018, Petitioner filed a Statement of Non-
`Opposition to [Patent Owner’s] Motion to Amend. Paper 22. On April 24,
`2018, the Supreme Court held that a decision to institute under 35 U.S.C.
`§ 314 may not institute on less than all claims challenged in the petition.
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018). Subsequent to the
`SAS decision, we instituted on all remaining challenges raised in the Petition,
`on May 8, 2018. Paper 23. On May 16, 2018, Patent Owner filed a Motion
`to Amend [Claims] Pursuant to 37 C.F.R. § 42.121 (Paper 24) seeking
`cancellation of claims 1–5, 8–11, 16, and 17 and an Amended Request for
`Adverse Judgment as to Instituted Claims 1–5, 8–11, 16, and 17 (Paper 25).
`Patent Owner, therefore, has requested cancellation and adverse judgment as
`to all claims challenged in the Petition and upon which inter partes review
`has been instituted.
`A party may request adverse judgment against itself at any time.
`37 C.F.R. § 42.73(b). Patent Owner requests cancelation of all claims
`
`2
`
`
`
`IPR2017-01278
`Patent 6,820,204 B1
`
`challenged in the Petition and upon which we instituted inter partes review,
`after which no claims would remain at issue in this proceeding. Under the
`circumstances presented here, we determine that it is appropriate to grant
`Patent Owner’s requests to cancel the challenged claims and enter adverse
`judgment. 37 C.F.R. § 42.73(b).
`
`ORDER
`
`Accordingly, it is:
`ORDERED that claims 1–5, 8–11, 16, and 17 of the ’204 patent are
`canceled;
`FURTHER ORDERED that Patent Owner’s request for adverse
`judgment with respect to claims 1–5, 8–11, 16, and 17 of the ’204 patent is
`granted, and adverse judgment is entered against Patent Owner in this
`proceeding pursuant to 37 C.F.R. § 42.73(b).
`
`
`
`
`
`3
`
`
`
`IPR2017-01278
`Patent 6,820,204 B1
`
`
`FOR PETITIONER:
`
`Heidi L. Keefe
`Andrew Mace
`Cooley LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`FOR PATENT OWNER:
`
`Michael F. Heim
`HEIM PAYNE & CHORUSH, LLP
`mhein@hpcllp.com
`
`
`
`4
`
`
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