Trials@uspto.gov
`571-272-7822
`
`Paper 24
`Date Entered: April 22, 2015
`
`
`
`
`
`
`
`
`
`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 IPR2014-00737
`Case IPR2015-00334
`Patent 8,050,652 B2
`____________
`
`Before BRIAN J. McNAMARA, FRANCES L. IPPOLITO, and
`TINA E. HULSE, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
`
`
`571-272-7822
`
`Paper 24
`Date Entered: April 22, 2015
`
`
`
`
`
`
`
`
`
`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 IPR2014-00737
`Case IPR2015-00334
`Patent 8,050,652 B2
`____________
`
`Before BRIAN J. McNAMARA, FRANCES L. IPPOLITO, and
`TINA E. HULSE, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
`
`
`
`IPR2014-00737
`IPR2015-00334
`Patent 8,050,652 B2
`
`
`
`BACKGROUND
`On May 8, 2014, Petitioner Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., and Samsung Telecommunications America, LLC
`(collectively, “Petitioner Samsung”) filed a Petition seeking inter partes
`review of claims 1, 3, 4, 6, 7, 10, 11, 13, 42, 44, 45, 47–50, 52 and 55 of
`U.S. Patent No. 8,050,652 B2 (“the ’652 patent”). On November 4, 2014,
`we instituted inter partes review of claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45,
`47, 48, 50, 52, and 55 of the ’652 patent in IPR2014-00737. Paper 7, 22–23.
`On December 3, 2014, 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, 3, 4, 6,
`7, 10, 11, 13, 42, 44, 45, 47–50, 52 and 55 of the ’652 patent (IPR2015-
`00334, Paper 2), and a Motion for Joinder to IPR2014-00737 (IPR2015-
`00334, Paper 3). On January 28, 2015, we instituted inter partes review of
`claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 of the ’652
`patent in IPR2015-00334 and granted Petitioner LG’s motion for joinder of
`IPR2015-00334 with previously instituted IPR2014-00737. IPR2014-
`00737, Paper 16, 3–4. In that Decision, the ground on which IPR2014-
`00737 was instituted was unchanged, no other grounds were instituted in the
`joined proceeding, and the Scheduling Order in place for IPR2014-00737
`(Paper 12) was unchanged and applied to the joined proceeding. Id. at 4.
`We also terminated the IPR2015-00334 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.
`On April 3, 2015, Patent Owner filed a Request for Adverse Judgment,
`
`
`
`2
`
`
`
`IPR2014-00737
`IPR2015-00334
`Patent 8,050,652 B2
`
`
`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, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 of
`U.S. Patent No. 8,050,652 (“the ’652 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. 22. 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, and the deadline for filing such a motion
`has passed. See Paper 12. 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.
`
`ORDER
`It is ORDERED that Patent Owner’s request for adverse judgment
`under 37 C.F.R. § 42.73(b) with respect to claims 1, 3, 4, 6, 7, 10, 13, 42, 44,
`
`
`
`3
`
`
`
`IPR2014-00737
`IPR2015-00334
`Patent 8,050,652 B2
`
`
`45, 47, 48, 50, 52, and 55 of U.S. Patent No. 8,050,652 B2 is GRANTED;
`and,
`
`ORDERED that judgment is entered herein against Patent Owner with
`respect to claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 of
`U.S. Patent No. 8,050,652 B2. Claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47,
`48, 50, 52, and 55 are unpatentable, and shall be cancelled.
`
`PETITIONER:
`
`Andrea G. Reister
`Gregory S. Discher
`COVINGTON & BURLING LLP
`areister@cov.com
`gdischer@cov.com
`
`Doris Johnson Hines
`Jonathan R.K. Stroud
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`dori.hines@finnegan.com
`jonathan.stroud@finnegan.com
`
`PATENT OWNER:
`
`Thomas Engellenner
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`Christopher Horgan
`CONCERT TECHNOLOGY
`chris.horgan@concerttechnology.com
`
`
`
`
`
`4
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