`571-272-7822
`
`
`
`
`Paper No. 27
`
`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.
`
`
`JUDGMENT
`Granting Patent Owner’s Request for Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`MONKEYmedia, Inc. (“Patent Owner”) has filed, with our prior
`authorization, a Motion for Adverse Judgment as to claims 1 and 7.
`Paper 25, 2–3 (“Mot.”). For the reasons discussed below, we grant Patent
`Owner’s request.
`
`
`
`IPR2018-00059
`Patent 9,247,226 B2
`
`
`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,
`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 Mot. 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.
`On June 5, 2018, upon authorization, the parties filed a Joint Motion
`to Limit the Petition. Paper 24. Patent Owner filed the instant Motion for
`Adverse Judgment one day later, on June 6, 2018. Concurrently with this
`
`2
`
`
`
`IPR2018-00059
`Patent 9,247,226 B2
`
`Decision, we issue an Order granting the parties’ Joint Motion to Limit the
`Petition to remove Grounds 2 and 3 from this inter partes review, limiting
`the review to claims 1 and 7 on Ground 1 asserted in the Petition.
`ANALYSIS
`Rule 42.73(b) permits a party to “request judgment against itself at
`any time during a proceeding.” 37 C.F.R. § 42.73(b). Patent Owner
`requests adverse judgment as to claims 1 and 7, challenged in Ground 1
`raised in the Petition, and subsequently statutorily disclaimed under 37
`C.F.R. § 1.321(a) by Patent Owner. Mot. 2–3. Under the circumstances
`presented here, we find it is appropriate to grant Patent Owner’s request for
`adverse judgment on the identified claims because doing so will achieve the
`parties’ joint objective of resolving this inter partes review.
`
`ORDER
`For the reasons discussed above, it is:
`ORDERED that Patent Owner’s request for adverse judgment
`(Paper 25) is granted, and
`FURTHER ORDERED that judgment is entered against Patent Owner
`under 37 C.F.R. § 42.73(b) with respect to claims 1 and 7 of the ’226 patent,
`the only claims at issue in this proceeding in light of our Order Granting the
`Joint Motion to Limit 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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