09178606 (P.T.A.B. Dec. 12, 2014)

Compass Bankv.Intellectual Ventures II LLC

Patent Trial and Appeal BoardDec 12, 2014

09178606 (P.T.A.B. Dec. 12, 2014)

Trials@uspto.gov Paper 19 571-272-7822 Entered: December 12, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ COMPASS BANK, COMMERCE BANCSHARES, INC., and FIRST NATIONAL BANK OF OMAHA, Petitioners, v. INTELLECTUAL VENTURES II LLC, Patent Owner. ____________ Case IPR 2014-007191 Patent 6,314,409 B2 Before KRISTEN L. DROESCH, JENNIFER S. BISK, and JUSTIN BUSCH, Administrative Patent Judges. DROESCH, Administrative Patent Judge. JUDGMENT Request for Adverse Judgment 37 C.F.R. § 42.73 We instituted inter partes review of claim 23 of U.S. Patent No. 6,314,409 (“the ’409 Patent”) on October 24, 2014. Paper 11. Pursuant to 1 Case IPR 2014-00722 has been consolidated with the instant proceeding. IPR2014-00719 Patent 6,314,409 2 our authorization, Patent Owner filed a Request for Adverse Judgment under 37 C.F.R. § 42.73(b) on November 13, 2014. Paper 17. In its Request for Adverse Judgment, Patent Owner indicates that claim 23, the only claim on which trial was instituted, was disclaimed under 37 C.F.R. § 1.321(a) on November 3, 2014. Id. at 2 (citing Ex. 2007). Subsequent to the disclaimer of claim 23, Patent Owner has no remaining claim in the trial. See 37 C.F.R. § 42.73(b). Accordingly, it is ORDERED that judgment under 37 C.F.R. § 42.73(b) is entered against Patent Owner with respect to claim 23; and FURTHER ORDERED that this constitutes a final written decision with respect to claim 23 under 35 U.S.C. § 318(a)2. 2 On December 3, 2014, a conference call was held between Judges Droesch, Bisk, and Busch, counsel for Petitioner, and counsel for Patent Owner. During the call, counsel for Petitioner asked for a final written decision addressing all of the claims challenged in the Petition, as required allegedly by 35 U.S.C. § 318(a). This decision addresses the only claim included in the inter partes review. IPR2014-00719 Patent 6,314,409 3 PETITIONERS: Joseph Melnik Geoffrey K. Gavin JONES DAY jmelnik@jonesday.com ggavin@jonesday.com Marc Vander Tuig SENNIGER POWERS LLP mvandertuig@senniger.com Jason Jackson KUTAK ROCK LLP jason.jackson@kutakrock.com PATENT OWNER: Lori Gordon Omar Amin STERNE, KESSLER, GOLDSTEIN & FOX PLLC lgordon-PTAB@skgf.com oamin-PTAB@skgf.com

Compass Bank v. Intellectual Ventures II LLC