`571-272-7822
`
`
`
`
`Paper No. 26
`
`Entered: July 13, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`
`v.
`
`MONKEYMEDIA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00059
`Patent 9,247,226 B2
`____________
`
`
`
`Before MARC S. HOFF, LYNNE E. PETTIGREW, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motion to Limit the Petition
`37 C.F.R. §§ 42.1(b), 42.5(a)
`
`
`The parties to this proceeding have filed, with our prior authorization,
`a Joint Motion to Limit the Petition. Paper 24 (“Mot.”). For the reasons
`
`
`
`IPR2018-00059
`Patent 9,247,226 B2
`
`discussed below, we grant the Joint Motion, and withdraw Grounds 2 and 3
`of the Petition from consideration in this inter partes review.
`BACKGROUND
`Unified Patents, Inc. (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1–12 of U.S. Patent No. 9,247,226 B2 (Ex. 1001, “the
`’226 patent”). Paper 2. On April 16, 2018, we instituted inter partes review
`of claims 1 and 7 on Ground 1 asserted in the Petition (obviousness over
`Lavallee, Gibson, Strickland, and Cohen), but declined to institute review on
`Grounds 2 and 3 asserted in the Petition (obviousness of claims 1–10 over
`Davenport and Efrat, and obviousness of claims 11 and 12 over Davenport,
`Efrat, and Bartok). Paper 15, 36.
`
`On April 24, 2018, the Supreme Court issued its decision in SAS
`Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Subsequent to that decision,
`MONKEYmedia, Inc. (“Patent Owner”) filed a statutory disclaimer of
`claims 1 and 7 pursuant to 37 CFR § 1.321(a). Paper 18; Ex. 2010.
`On May 15, 2018, the parties notified the Board by email that they
`had reached agreement to resolve this inter partes review. See Paper 25, 2.
`Specifically, the parties agreed that Patent Owner would request adverse
`judgment as to instituted claims 1 and 7, and that the parties would stipulate
`to a joint withdrawal/waiver of the currently non-instituted grounds and
`claims, thereby warranting termination of the IPR. See id. The Board
`authorized the parties to file such a joint Motion to Limit the Petition, and
`authorized Patent Owner to file a Motion for Adverse Judgment as to claims
`1 and 7, in a teleconference on May 18, 2018. See id. The Board
`subsequently issued an order confirming that authorization. Paper 20. The
`parties filed the instant Joint Motion to Limit the Petition on June 5, 2018.
`
`2
`
`
`
`IPR2018-00059
`Patent 9,247,226 B2
`
`
`ANALYSIS
`The parties jointly request the withdrawal of Grounds 2 and 3 of the
`Petition from consideration in this review, and request that the Board limit
`its consideration to Ground 1. Mot. 1. Under the circumstances presented
`here, we find it is appropriate to grant the parties’ joint request. Removing
`grounds from dispute, pursuant to a joint request of the parties, serves our
`overarching goal of resolving this inter partes review in a just, speedy, and
`inexpensive manner. See 37 CFR 42.1(b); Apotex Inc. v. OSI Pharms., Inc.,
`Case IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19). Accordingly, we
`grant the parties’ Joint Motion to Limit the Petition. The obviousness
`challenges to claims 1–10 over Davenport and Efrat (i.e., Ground 2) and to
`claims 11 and 12 over Davenport, Efrat, and Bartok (i.e., Ground 3) are
`removed from this proceeding. The Petition is limited to review of claims 1
`and 7 on the ground of obviousness over Lavallee, Gibson, Strickland, and
`Cohen.
`
`ORDER
`For the reasons discussed above, it is:
`ORDERED that the parties’ Joint Motion to Limit the Petition is
`granted;
`FURTHER ORDERED that Grounds 2 and 3 of the Petition are
`hereby withdrawn from consideration in this inter partes review; and
`FURTHER ORDERED that the Petition is limited to review of
`claims 1 and 7 on Ground 1 asserted in the Petition.
`
`
`
`3
`
`
`
`IPR2018-00059
`Patent 9,247,226 B2
`
`PETITIONER:
`
`Stuart A. Nelson
`W. Karl Renner
`Ryan Chowdhury
`FISH & RICHARDSON P.C.
`snelson@fr.com
`axf-ptab@fr.com
`rchowdhury@fr.com
`
`Ashraf Fawzy
`Jonathan Stroud
`UNIFIED PATENTS, INC.
`afawzy@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`
`PATENT OWNER:
`
`Jonathan D. Baker
`FARNEY DANIELS PC
`jbaker@farneydaniels.com
`
`
`4
`
`
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