Unified Patents Inc.v.TransVideo Electronics Ltd.

Patent Trial and Appeal Board

Feb 8, 2016

08085329 (P.T.A.B. Feb. 8, 2016)

Trials@uspto.gov Paper 11
571-272-7822 Entered: February 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

UNIFIED PATENTS INC.,
Petitioner,

v.

TRANSVIDEO ELECTRONICS, LTD.,
Patent Owner.
____________

Case IPR2015-01519
Patent 5,594,936
____________

Before THOMAS L. GIANNETTI, MATHEW R. CLEMENTS, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

JUDGMENT AND FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
IPR2015- 01519
Patent 5,594,936

2

I. INTRODUCTION
On January 15, 2016, we instituted an inter partes review of claims 1–14 of
U.S. Patent No. 5,594,936. Paper 8.
Patent Owner sought permission to file, and then filed, a “Request for
Adverse Judgment” on February 6, 2016. Paper 10. The request, made pursuant to
37 C.F.R. § 42.73(b)(4), states “Patent Owner hereby abandons the contest, and
requests adverse judgment.” Id. No opposition has been filed by Petitioner.
II. DISCUSSION
A party may request judgment against itself at any time during a proceeding.
37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(4), “[a]bandonment of the
contest” is construed as a request for adverse judgment. Here, Patent Owner has
abandoned the contest as to all claims subject to trial in this proceeding and
requested adverse judgment. Paper 10. Under these circumstances, entry of
judgment adverse to the Patent Owner and cancellation of claims 1–14 is
appropriate.
III. ORDER
Accordingly, it is:
ORDERED that Patent Owner’s Request for Adverse Judgment under 37
C.F.R. § 42.73(b) with respect to claims 1–14 of U.S. Patent No. 5,594,936 is
granted;
FURTHER ORDERED that judgment is herein entered against Patent
Owner with respect to claims 1−14 of Patent 5,594,936;
FURTHER ORDERED that this constitutes a final written decision under
35 U.S.C. § 328(a); and
FURTHER ORDERED that claims 1–14 of U.S. Patent No. 5,594,936 be
canceled.
IPR2015- 01519
Patent 5,594,936

3

PETITIONER:

P. Andrew Riley
Joshua Goldberg
Carlos Rosario
Jonathan Stroud
FINNEGAN, HENDERSON, FARABOW, GARRETT
& DUNNER, LLP
andrew.riley@finnegan.com
joshua.goldberg@finnegan.com
carlos.rosario@finnegan.com
Jonathan.stroud@finnegan.com

PATENT OWNER:

René A. Vazquez
Maureen V. Abbey
HENINGER GARRISON DAVIS, LLC
rvazquez@hgdlawfirm.com
maureen@hgdlawfirm.com
PG_iMTX@hgdlawfirm.com