`Tel: 571-272-7822
`
`Paper 23
`Entered: June 13, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BMW OF NORTH AMERICA, LLC,
`BMW MANUFACTURING CO., LLC, and
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01836
`Patent 7,067,944 B2
`____________
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, JOHN A. HUDALLA, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`JUDGMENT
`37 C.F.R. § 42.73
`
`BMW of North America, LLC, BMW Manufacturing Co., LLC, and
`Bayerische Motoren Werke Aktiengesellschaft (collectively, “Petitioner”)
`filed a Petition requesting an inter partes review of claims 3 and 9–11 of
`U.S. Patent No. 7,067,944 B2 (“the ’944 patent”). Paper 1. We instituted
`
`
`
`IPR2017-01836
`Patent 7,067,944 B2
`review of all challenged claims on all grounds of unpatentability presented.
`Paper 9.
`On June 12, 2018, Patent Owner, Intellectual Ventures II LLC
`(“Patent Owner”), submitted a notice informing us that it had filed statutory
`disclaimers of claims 3 and 9–11 of the ’944 patent. Paper 21, 2; see also
`Exs. 2003, 2014. In the notice, Patent Owner stated: “Because there is no
`longer any patent claim challenged by Petitioner[], the Board may terminate
`this IPR without entry of a Final Written Decision.” Paper 21, 2 (citing
`35 U.S.C. § 318(a); 37 C.F.R. § 42.72).
`Our rules provide that “[a] party may request judgment against itself
`at any time during a proceeding.” 37 C.F.R. § 42.73(b). Moreover, certain
`actions taken by a party, such as the “[c]ancellation or disclaimer of a claim
`such that the party has no remaining claim in the trial,” can be construed as a
`request for adverse judgment against that party. Id. § 42.73(b)(2). Pursuant
`to 37 C.F.R. § 42.73(b)(2), we construe Patent Owner’s disclaimer of
`claims 3 and 9–11 as a request for adverse judgment because the disclaimer
`leaves Patent Owner with no remaining claim in this trial. See Exs. 2003,
`2014.
`
`Accordingly, on the record before us, we enter adverse judgment
`against Patent Owner pursuant to 37 C.F.R. § 42.73(b) and terminate the
`trial pursuant to 37 C.F.R. § 42.72.
`
`
`Accordingly, it is:
`ORDERED that Patent Owner’s disclaimer is construed to be a
`request for adverse judgment;
`
`2
`
`
`
`
`IPR2017-01836
`Patent 7,067,944 B2
`FURTHER ORDERED that adverse judgment is entered against
`Patent Owner; and
`FURTHER ORDERED that this proceeding is hereby terminated.
`
`3
`
`
`
`
`IPR2017-01836
`Patent 7,067,944 B2
`PETITIONER:
`Jeffrey D. Sanok
`Jonathan Lindsay
`Scott L. Bittman
`CROWELL & MORING LLP
`jsanok@crowell.com
`jlindsay@crowell.com
`sbittman@crowell.com
`
`PATENT OWNER:
`John R. King
`Ted M. Cannon
`Bridget A. Smith
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2jrk@knobbe.com
`2tmc@knobbe.com
`2bzs@knobbe.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`
`
`
`
`
`4
`
`
`
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