GN RESOUND ASv.Oticon A/S

Patent Trial and Appeal Board

Oct 7, 2015

12342241 (P.T.A.B. Oct. 7, 2015)

Trials@uspto.gov Paper 19
571-272-7822 Entered: October 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GN RESOUND A/S,
Petitioner,

v.

OTICON A/S,
Patent Owner.
____________

Case IPR2015-00103
Patent 8,300,863 B2
____________

Before MICHELLE R. OSINSKI, NEIL T. POWELL, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

JUDGMENT
Request for Adverse Judgment
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
IPR2015-00103
Patent 8,300,863 B2
2

INTRODUCTION
Petitioner GN Resound A/S filed a Petition on October 21, 2014,
requesting an inter partes review of claims 6–10, 14, 15, and 21–24 of
U.S. Patent No. 8,300,863 B2 (Ex. 1001, “the ’863 patent”). (Paper 1,
“Pet.”). Patent Owner Oticon A/S filed a Preliminary Response to the
Petition on January 30, 2015 (Paper 6, “Prelim. Resp.”). On April 29, 2015,
we instituted trial on claims 9, 10, 15, and 21–24 of the ’863 patent.
Paper 10. Patent Owner now requests that claims 9, 10, 15, and 21–24 of the
’863 patent be cancelled and adverse judgment be entered under 37 C.F.R.
§ 42.73(b)(2). Paper 18. Petitioner does not oppose Patent Owner’s request.
A patent owner may request judgment against itself “at any time
during a proceeding” upon cancellation of the particular claims at issue such
that there is “no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2).
Here, Patent Owner has requested cancellation of all the claims on which
trial was instituted; hence, no claims will remain for trial. Paper 18. In view
of the cancellation of claims 9, 10, 15, and 21–24 of the ’863 patent, the
entry of final judgment adverse to Patent Owner is appropriate.
IV. ORDER
Accordingly, it is hereby
ORDERED that Patent Owner’s request for adverse judgment is
granted;
FURTHER ORDERED that claims 9, 10, 15, and 21–24 of U.S.
Patent No. 8,300,863 B2 shall be cancelled;
FURTHER ORDERED that judgment against Patent Owner, pursuant
to 37 C.F.R. § 42.73(b)(2) is entered; and
FURTHER ORDERED that this paper constitutes a Final Written
Decision under 35 U.S.C. § 318(a).
IPR2015-00103
Patent 8,300,863 B2
3

PETITIONER:

Scott A. McKeown
Greg Gardella
OBLON, SPIVAK, MCCLELLAND, MAIER, & NEUSTADT LLP
cpdocketMcKeown@oblon.com
cpdocketGardella@oblon.com

PATENT OWNER:

D. Richard Anderson
George Dolina
BIRCH, STEWART, KOLASCH & BIRCH, LLP
dra@bskb.com
gsd@bskb.com