Integrated Sensing Systems, Inc.Download PDFPatent Trials and Appeals BoardOct 2, 2020IPR2019-01338 (P.T.A.B. Oct. 2, 2020) Copy Citation Trials@uspto.gov Paper 12 571-272-7822 Date: October 2, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ABBOTT LABORATORIES, ABBOTT LABORATORIES, INC., ST. JUDE MEDICAL, INC., and CARDIOMEMS LLC, Petitioner v. INTEGRATED SENSING SYSTEMS, INC., Patent Owner. ____________ IPR2019-01338 Patent 6,926,670 B2 ____________ Before SCOTT A. DANIELS, ROBERT A. POLLOCK, and ALYSSA A. FINAMORE, Administrative Patent Judges. DANIELS, Administrative Patent Judge. ORDER Granting Request for Adverse Judgment After Institution of Trial 37 C.F.R. § 42.73(b) IPR2019-01338 Patent 6,926,670 B2 2 Petitioner filed a Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1–4, 21, 26, 27, and 31 of U.S. Patent No. 6,926,670 B2. Pet. 1. On January 23, 2020, we issued a Decision granting institution of inter partes review and giving notice of trial. Paper 7. In lieu of a response under 35 U.S.C. § 316(a)(8), Patent Owner filed a request for adverse judgment pursuant to 37 C.F.R. § 42.73(b). Paper 11 (“Req.”). Petitioner has not filed an opposition to Patent Owner’s request for adverse judgment, and the deadline for any such opposition has passed. A party may “request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). A request for adverse judgment can include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. § 42.73(b)(2). In its request, Patent Owner avers “[t]he requested judgment will effectively cancel the claims identified for trial and moot this proceeding,” and “[t]his request extends to only to Claims 1–4, 21, 26, 27, and 31 of the 6,926,670 patent that were made subject to Inter Partes Review . . . .” Req. 1–2. Patent Owner’s request for adverse judgment thus constitutes a request for cancellation of all claims challenged in the Petition, leaving no claims remaining for trial. As no claims will remain for trial, entry of adverse judgment against Patent Owner is appropriate, and we grant Patent Owner’s request for adverse judgment. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s request for adverse judgment is granted; IPR2019-01338 Patent 6,926,670 B2 3 FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(b), judgment against Patent Owner is entered; FURTHER ORDERED that claims 1–4, 21, 26, 27, and 31 of U.S. Patent No. 6,926,670 B2 are canceled; and FURTHER ORDERED that this Order constitutes a Final Written Decision under 35 U.S.C. § 318(a). IPR2019-01338 Patent 6,926,670 B2 4 For PETITIONER: Michael Morin Jonathan Strang Giri Pathmanaban LATHAM & WATKINS LLP michael.morin@lw.com jonathan.strang@lw.com giri.pathmanaban@lw.com For PATENT OWNER: James Cleland BRINKS GILSON & LIONE jcleland@brinksgilson.com Copy with citationCopy as parenthetical citation