`571-272-7822
`
`
`
`
`Paper 8
`
`Entered: November 13, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`INFOGATION CORPORATION,
`Patent Owner.
`____________
`
`Cases IPR2017-01656, -01677
`Patent 9,528,843 B2
`____________
`
`Before NEIL T. POWELL, CARL M. DEFRANCO, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`JUDGMENT
`Termination of the Proceeding Pre-Institution
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`IPR2017-01656, -01677
`Patent 9,528,843 B2
`
`
`On June 28, 2017, Google LLC1 filed separate Petitions for inter
`
`partes review of U.S. Patent No. 9,528,843 B2 (“the ’843 patent”), with
`
`each Petition challenging claims 1, 2, 5, 7, 10, and 11 as unpatentable for
`
`obviousness. Paper 2, 4.2 On October 13, 2017, InfoGation Corporation,
`
`the owner of the ’843 patent, filed a Request for Adverse Judgment against
`
`itself in each proceeding “for reason of abandonment of the contest of each
`
`of claims 1, 2, 4, 7, 10 and 11 of the ’843 patent.” Paper 7, 1. While the
`
`stated abandonment refers to claim 4, InfoGation’s Request previously
`
`acknowledged that the Petition challenges claim 5, not claim 4, so we
`
`understand InfoGation’s abandonment to refer to claim 5. Id. Google does
`
`not oppose the Request for Adverse Judgment.
`
`A patent owner may request 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 abandonment of the contest. Id. at
`
`§ 42.73(b)(4). Here, a decision on institution has not been entered, and
`
`InfoGation has decided to abandon the contest and request adverse judgment
`
`against itself with respect to all challenged patent claims. All challenged
`
`patent claims are effectively canceled following an adverse judgment by the
`
`Board. Because no patent claim remains for consideration in these
`
`proceedings, the entry of final judgment adverse to InfoGation and the
`
`cancellation of all challenged patent claims is appropriate.
`
`
`1 Google Inc. was the originally-named petitioner. Paper 2. On September
`30, 2017, Google Inc. converted from a corporation to a limited liability
`company and changed its name to Google LLC. Paper 6. Google LLC is a
`subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.
`Id.
`2 The citations herein are the same for each of the two proceedings.
`
`2
`
`
`
`IPR2017-01656, -01677
`Patent 9,528,843 B2
`
`
`Accordingly, it is hereby
`
`ORDER
`
`ORDERED that Patent Owner InfoGation Corporation’s Request for
`
`Adverse Judgment against itself with respect to claims 1, 2, 5, 7, 10, and 11
`
`of U.S. Patent No. 9,528,843 B2 is granted;
`
`FURTHER ORDERED that judgment against Patent Owner
`
`InfoGation Corporation is entered, and that claims 1, 2, 5, 7, 10, and 11 of
`
`U.S. Patent No. 9,528,843 B2 are canceled;
`
`FURTHER ORDERED that Patent Owner InfoGation Corporation
`
`shall file a notice and copy of this judgment and decision in the files of any
`
`pending applications or proceedings relating to U.S. Patent No. 9,528,843
`
`B2; and
`
`FURTHER ORDERED that these proceedings are terminated.
`
`
`
`FOR PETITIONER:
`
`
`
`Michael T. Hawkins
`Kim H. Leung
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`leung@fr.com
`
`
`
`FOR PATENT OWNER:
`
`
`
`Michael A. Makuch
`Ryan A. Varnum
`SMITH GAMBRELL & RUSSELL, LLP
`MMakuch@SGRlaw.com
`RVarnum@SGRlaw.com
`
`
`3
`
`
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