Invue Security Products, Inc. v Merchandising Technologies, Inc.

Patent Trial and Appeal BoardMar 21, 2014

12823479 (P.T.A.B. Mar. 21, 2014)

Trial@uspto.gov Paper No. 49 571-272-7822 Entered: March 21, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ INVUE SECURITY PRODUCTS, INC. Petitioner v. MERCHANDISING TECHNOLOGIES, INC. Patent Owner ____________ Case IPR2013-00122 Patent 7,909,641 B1 ____________ Before JOSIAH C. COCKS, JENNIFER S. BISK, and GEORGIANNA W. BRADEN, Administrative Patent Judges. BRADEN, Administrative Patent Judge JUDGMENT Request for Adverse Judgment 37 C.F.R. Â§ 42.73(b) Case IPR2013-00122 Patent 7,909,641 B1 I. INTRODUCTION On March 19, 2014, Patent Owner, Merchandising Technologies, Inc., (i) withdrew Patent Ownerâ€™s Motion to Amend Claims (Paper 29), (ii) requested cancellation of claims 1-6 of US Patent No. 7,909,641, which are all of the claims in this inter partes review, and (iii) sought entry of adverse judgment. Paper 48. Under 35 C.F.R. Â§ 42.73(b), a party may request judgment against itself at any time during a proceeding. Furthermore, under 37 C.F.R. Â§ 42.73(b)(2), actions construed as a request for entry of adverse judgment include cancellation of a claim such that the party has no remaining claim in the trial. Patent Owner has not only requested cancellation of all claims involved in this inter partes review, such that after the cancellation it will have no remaining claim in the trial, but also expressly requested entry of adverse judgment. Patent Ownerâ€™s request to cancel claims 1-6 and request for entry of adverse judgment are granted. Claims 1-3 of US Patent No. 7,909,641 are the subject of co-pending ex parte reexamination 96/000,007. On April 2, 2013, the Board stayed the ex parte reexamination proceedings pending the termination or completion of this inter partes review. Paper 15. The stay is hereby lifted for the implementation of any necessary action that is consistent with the orders of the Board. In consideration of the foregoing, it is hereby: ORDERED that judgment is herein entered against Patent Owner under 37 C.F.R. Â§ 42.73(b); FURTHER ORDERED that this constitutes a final written decision under 35 U.S.C. Â§ 318(a); Case IPR2013-00122 Patent 7,909,641 B1 FURTHER ORDERED that the request to cancel claims 1-6 of Patent 7,909,641 is GRANTED; FURTHER ORDERED that the stay in ex parte reexamination 96/000,007 is lifted, so that any necessary action, which is consistent with the Boardâ€™s orders in inter partes review IPR 2013-00122, can be taken; FURTHER ORDERED that the oral hearing scheduled for March 26, 2014 is CANCELLED; and FURTHER ORDERED that inter partes review captioned IPR2013-00122 be terminated. Case IPR2013-00122 Patent 7,909,641 B1 For PETITIONER: Trent A. Kirk InVue Security Products, Inc. trentkirk@invuesecurity.com Christopher Douglas Allston and Bird, LLP christopher.douglas@alston.com Christopher Dremann Christopher Dremann P.C. cdremann@ccdpc.com For PATENT OWNER: William Geny Susan Pitchford Chernoff, Vilhauer, McClung & Stenzel, LLP bill@chernofflaw.com sdp@chernofflaw.com