Integrated Sensing Systems, Inc.

Patent Trials and Appeals Board

Oct 2, 2020

IPR2019-01339 (P.T.A.B. Oct. 2, 2020)

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.
____________

IPR2019-01339
Patent 6,926,670 B2
____________

Before SCOTT A. DANIELS, ROBERT A. POLLOCK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

ORDER
Granting Request for Adverse Judgment After Institution of Trial
37 C.F.R. § 42.73(b)
IPR2019-01339
Patent 6,926,670 B2

2
Petitioner filed a Petition (Paper 2, “Pet.”) requesting an inter partes
review of claims 1–5, 21–29, 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 1–5, 21–29 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;
IPR2019-01339
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 1–5, 21–29, and 31 of U.S. Patent
No. 6,926,670 B2 are cancelled; and
FURTHER ORDERED that this Order constitutes a Final Written
Decision under 35 U.S.C. § 318(a).

IPR2019-01339
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