Taiwan Semiconductor Manufacturing Company, Limitedv.Ziptronix, Inc.

Patent Trial and Appeal Board

Nov 21, 2013

11442394 (P.T.A.B. Nov. 21, 2013)

Trials@uspto.gov Paper 20
571-272-7822 Date: November 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TAIWAN SEMICONDUCTOR MANUFACTURING
COMPANY, LIMITED
Petitioner

v.

ZIPTRONIX, INC.
Patent Owner
____________

Case IPR2013-00154
Patent 7,335,996
____________

Before KEVIN F. TURNER, JONI Y. CHANG, and
RAMA G. ELLURU, Administrative Patent Judges.

TURNER, Administrative Patent Judge

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.5

Cased IPR2013-00154
Patent 7,335,996 B2

2

BACKGROUND
On August 9, 2013, the Board instituted this inter parte review of claims 1-5
and 10 of patent 7,335,996. Paper 12. On October 22, 2013, Patent Owner filed
its Patent Owner’s Response to the Petition, Paper 17, requesting adverse judgment
pursuant to 37 C.F.R. § 42.73(b), with respect to the claims that are the subject of
this instant proceedings. On October 28, 2013, the Board initiated a conference
call, Paper 18, inquiring whether Petitioner would file a reply to the Patent
Owner’s Response, where Petitioner indicated that it would not, but indicated that
its Request for Rehearing, Paper 14, if granted, would result in more claims being
subject to the inter parte review. Subsequently, Petitioner’s Request for Rehearing
was denied. Paper 19.

DISCUSSION
A party may request entry of adverse judgment against itself at any time
during a proceeding. 37 C.F.R. § 42.73(b). Even without a request for entry of
adverse judgment, the posture of this proceeding is that Patent Owner already has
conceded the unpatentability of each claim for which this inter partes review was
instituted, and has no pending motion to amend claims. The deadline for filing
such a motion has passed. See Paper 13. Under these circumstances, the Request
for Entry of Adverse Judgment is appropriate.

CONCLUSION
The Patent Owner’s Request for Entry of Adverse Judgment is herein
granted.
It is
ORDERED that claims 1-5 and 10 are CANCELLED.
Cased IPR2013-00154
Patent 7,335,996 B2

3

For PETITIONER:
Steven H. Slater
Roger C. Knapp
SLATER & MATSIL, L.L.P.
slater@slater-matsil.com
knapp@slater-matsil.com

For PATENT OWNER:
Carl E. Schlier
Scott A. McKeown
OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, L.L.P.
CPdocketSchlier@oblon.com
CPdocketMcKeown@oblon.com