In its Final Written Decision, the Board granted Patent Owner’s Motion to Amend which had requested the cancellation of each of challenged claims 1, 2, 5–9, and 11 of the ’688 patent. In doing so, the Board treated Patent Owner’s Motion to Amend as a request for adverse judgment, and in response, entered judgment against Patent Owner with respect to claims 1, 2, 5–9, and 11 of the ’688 patent.
Petitioner filed a Petition seeking inter partes review of claims 1–11 of the ’688 patent. The Board granted the Petition and instituted trial on one asserted ground of unpatentability – obviousness under 35 U.S.C. § 103(a) over Singh, RFC 3135, and APA – as to claims 1 2, 5–9, and 11. Patent Owner then filed a Motion to Amend requesting the cancellation of all claims involved in the inter partes proceeding, namely, claims 1, 2, 5–9, and 11 of the ’688 patent. Petitioner did not oppose Patent Owner’s Motion to Amend
As noted by the Board, a party may request judgment against itself at any time during a proceeding under 37 C.F.R. § 42.73(b). The Board went on to say that it considered the cancellation of one or more claims, such that the patent owner has no challenged claims remaining in the trial, to be a request for adverse judgment. 37 C.F.R. § 42.73(b)(2). Accordingly, because Patent Owner in this proceeding had requested cancellation of each of the claims of the ’688 patent upon which trial had been instituted, leaving no remaining claim in the trial, the Board considered it appropriate to enter judgment against Patent Owner at this time.
Silver Peak Systems, Inc. v. Riverbed Technology, Inc., IPR2014-00128
Paper 20: Final Written Decision
Dated: August 7, 2014
Patent 8,271,688 B2
Before: Justin T. Arbes, Frances L. Ippolito, and Christopher M. Kaiser
Written by: Ippolito
Related Proceedings: Riverbed Technology, Inc. v. Silver Peak Systems, Inc., No. CV-13-2980 (N.D. Cal.); Riverbed Technology, Inc. v. Silver Peak Systems, Inc., C.A. No. 11-484 (D. Del.); IPR2014-00149; Inter Partes Reexamination Control Nos. 95/002,308 and 95/002,310