`571-272-7822
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`Paper 24
`Date Entered: April 23, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`and
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioners,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00723
`Case IPR2015-00339
`Patent 8,214,873 B2
`____________
`
`Before BRIAN J. McNAMARA, PETER P. CHEN, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
`
`
`
`IPR2014-00723
`IPR2015-00339
`Patent 8,214,873 B2
`
`
`
`
`BACKGROUND
`On May 1, 2014, Petitioner Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., and Samsung Telecommunications America, LLC
`(collectively, “Petitioner Samsung”) filed a Petition (Paper 1) seeking inter
`partes review of claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30, 31, 34–37, and
`44–46 of U.S. Patent No. 8,214,873 B2 (“the ’873 patent”). On November
`4, 2014, we instituted inter partes review of claims 1, 2, 5–8, 15–19, 22, 23,
`25–27, 30, 31, 34–37, and 44–46 of U.S. Patent No. 8,214,873 B2 in
`IPR2014-00723. Paper 7. On December 3, 2014, in IPR2015-00339,
`Petitioner LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG
`Electronics MobileComm U.S.A., Inc. (collectively, “Petitioner LG”) filed a
`Petition for inter partes review of claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30,
`31, 34–37, and 44–46 of the ’873 patent (Paper 2), and a Motion for Joinder
`to IPR2014-00723 (Paper 3).
`On January 28, 2015, we instituted inter partes review of claims 1, 2,
`5–8, 15–19, 22, 23, 25–27, 30, 31, 34–37, and 44–46 of the ’873 patent in
`IPR2015-00339 and granted Petitioner LG’s motion for joinder of IPR2015-
`00339 with previously instituted IPR2014-00723. IPR2014-00723, Paper
`16, 3–4. In that Decision, the grounds on which IPR2014-00723 was
`instituted were unchanged, no other grounds were instituted in the joined
`proceeding, and the Scheduling Order in place for IPR2014-00723 (Paper
`12) was unchanged and applied to the joined proceeding. IPR2014-00723,
`Paper 16 at 4. We also terminated the IPR2015-00339 proceeding. Id. at 4.
`Pursuant to the Scheduling Order, on February 4, 2015, Patent Owner
`filed its Response. Paper 17. Patent Owner did not file a motion to amend.
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`2
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`IPR2014-00723
`IPR2015-00339
`Patent 8,214,873 B2
`
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`On April 3, 2015, Patent Owner filed a Request for Adverse Judgment,
`Paper 23, requesting adverse judgment pursuant to 37 C.F.R. § 42.73(b),
`with respect to the claims that are the subject of this joined proceeding:
`Patent Owner . . . hereby requests that the Board cancel claims 1, 2,
`5–8, 15–19, 22, 23, 25–27, 30–31, 34–37, and 44–46 of U.S. Patent
`No. 8,214,873 (“the ‘873 Patent”). These claims are all claims for
`which the present inter partes review has been instituted. See
`Decision – Institution of Inter Partes Review, Paper 7, p. 19. See also
`Decision – Institution of Inter Partes Review and Grant of Motion for
`Joinder, Paper 16.
`
`In view of the cancellation of all claims remaining in the trial, Patent
`Owner requests that the Board enter adverse judgment against Patent
`Owner in this proceeding pursuant to 37 C.F.R. §42.73(b)(2).
`
`Paper 23, 1. Petitioner Samsung and Petitioner LG have not filed any reply
`to the Patent Owner’s Response.
`
`
`DISCUSSION
`A party may request entry of adverse judgment against itself at any
`time during a proceeding. See 37 C.F.R. § 42.73(b). Patent Owner has
`conceded that the requested judgment effectively will cancel the claims
`identified for trial and moot this proceeding. Paper 23, 1. There is no
`pending motion to amend claims. Patent Owner also has indicated by email
`to the Board that Petitioners have no objection to the Request for Adverse
`Judgment. Under these circumstances, the request for entry of adverse
`judgment is appropriate.
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`IPR2014-00723
`IPR2015-00339
`Patent 8,214,873 B2
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`ORDER
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`It is
`ORDERED that Patent Owner’s request for adverse judgment under
`37 C.F.R. § 42.73(b) with respect to claims 1, 2, 5–8, 15–19, 22, 23, 25–27,
`30, 31, 34–37, and 44–46 of U.S. Patent No. 8,214,873 B2 is GRANTED;
`and,
`
`FURTHER ORDERED that judgment is entered herein against Patent
`Owner with respect to claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30, 31, 34–37,
`and 44–46 of U.S. Patent No. 8,214,873 B2. Claims 1, 2, 5–8, 15–19, 22,
`23, 25–27, 30, 31, 34–37, and 44–46 of U.S. Patent No. 8,214,873 B2 are
`unpatentable, and shall be cancelled.
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`IPR2014-00723
`IPR2015-00339
`Patent 8,214,873 B2
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`PETITIONERS:
`Andrea Reister
`areister@cov.com
`
`Gregory Discher
`gdischer@cov.com
`
`Doris Johnson Hines
`dori.hines@finnegan.com
`
`Jonathan Stroud
`jonathan.stroud@finnegan.com
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`PATENT OWNER:
`
`Lana Gladstein
`gladsteinl@pepperlaw.com
`
`Reza Mollaaghababa
`mollaaghababar@pepperlaw.com
`
`Thomas Engellenner
`engellennert@pepperlaw.com
`
`Christopher Horgan
`chris.horgan@concerttechnology.com
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