Virentem Ventures, LLC d/b/a Enounce

Patent Trials and Appeals Board

Jul 6, 2020

IPR2019-01248 (P.T.A.B. Jul. 6, 2020)

Trials@uspto.gov Paper No. 25
571-272-7822 Entered: July 6, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,
Petitioner,
v.
VIRENTEM VENTURES, LLC,

Patent Owner.

IPR2019-01248
Patent 9,185,380 B2

Before MEREDITH C. PETRAVICK, BRYAN F. MOORE, and
TERRENCE W. McMILLIN, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

TERMINATION ORDER
Adverse Judgment Against Patent Owner
37 C.F.R. § 42.73(b)(4)

IPR2019-01248
Patent 9,185,380 B2

2
Patent Owner has abandoned this contest. Pursuant to 37 C.F.R.
§ 42.73(b)(4),1 this proceeding is terminated and adverse judgment is
entered against the Patent Owner.
Background
Google LLC (“Petitioner”) filed a petition to institute an inter partes
review of claims 1 and 2 of U.S. Patent No. 9,185,380 B2 (Ex. 1001, the
“’380 patent”) pursuant to 35 U.S.C. § 311 et seq. Paper 1 (“Petition”).
Virentem Ventures, LLC (“Patent Owner”) filed a preliminary response to
the Petition. Paper 12. An inter partes review was instituted. Paper 13.
Patent Owner’s response to the Petition was due on May 29, 2020.
Paper 14 (“Scheduling Order”), 9. Patent Owner failed to file a response.
On June 9, 2020, counsel for the Patent Owner sent an email to the Board
that said, “Patent Owner elected not to file a Patent Owner Response in
proceedings, U.S. Patent No. 8,566,885 and IPR2019-01248, U.S. Patent
No. 9,185,380” and that indicated “Petitioner believes that Patent Owner’s
failure to file responses constitutes an abandonment of these proceedings
under 37 C.F.R. 42.73(b)(4).” The Board authorized “the Petitioner to file a
motion asking for the relief it believes is appropriate in light of Patent
Owner having failed to file a response pursuant to 37 C .F.R. § 42.120” and
“Patent Owner [wa]s authorized to file a response to the motion opposing
the motion or otherwise stating why adverse judgment should not be entered
against it under 37 C.F.R. § 42.73(b)(4).”

1 37 C.F.R. § 42.73(b) provides, “[a] party may request judgment against
itself at any time during a proceeding. Actions construed to be a request for
adverse judgment include: . . . (4) Abandonment of the contest.”
IPR2019-01248
Patent 9,185,380 B2

3
Based on this authorization, Petitioner filed a “Motion Regarding
Patent Owner’s Failure to File Patent Owner’s Response.” Paper 21
(“Motion”). In its Motion, Petitioner argued Patent Owner’s “failure to file
a response should be construed as an ‘[a]bandonment of the contest’ under
37 C.F.R. § 42.73(b)(4) and adverse judgment should be entered against
[Patent Owner].” Motion 1. Patent Owner filed a Response to this Motion.
Paper 23 (“Response”). The Response said: “Patent Owner hereby notifies
the Board that Patent Owner is abandoning this contest. Patent Owner
understands that this abandonment of the contest constitutes a request for
adverse judgment pursuant to 37 C.F.R. §42.73(b)(4). Accordingly, Patent
Owner requests such adverse judgment and termination of this proceeding.”
Response 1. Petitioner filed a Reply. Paper 24 (“Reply”). The Reply
stated: “in light of [Patent Owner]’s confirmation that it has in fact
abandoned this proceeding and is requesting adverse judgment against itself,
[Petitioner] respectfully requests that the Board expeditiously enter adverse
judgment against [Patent Owner] on all challenged claims.” Reply 1. Thus,
the parties are in agreement that Patent Owner has abandoned this contest
and that adverse judgment should be entered against Patent Owner pursuant
to 37 C.F.R. § 42.73(b)(4).
The Patent Owner’s request for judgment against itself is granted and
this proceeding is terminated. As requested in the Petition, challenged
claims 1 and 2 of the ’380 patent are cancelled.

IPR2019-01248
Patent 9,185,380 B2

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ORDER
It is ordered that:
(1) adverse judgment is entered against Patent Owner and in favor
of Petitioner;
(2) claims 1, 11, and 13 of U.S. Patent No. 9,185,380 B2 shall be
cancelled; and
(3) this inter partes review is terminated.
In summary:
Claims

Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 2 abandonment
of contest
1, 2
Overall
Outcome
1, 2
IPR2019-01248
Patent 9,185,380 B2

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For PETITIONER:

Naveen Modi
Joseph Palys
Daniel Zeilberger
Arvind Jairam
Jason Heidemann
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
danielzeilberger@paulhastings.com
arvindjairam@paulhastings.com
jasonheidemann@paulhastings.com

For PATENT OWNER:

Lauren Robinson
Christina Finn
BUNSOW DE MORY LLP
lrobinson@bdiplaw.com
cfinn@bdiplaw.com