`
`Trials@uspto.gov Paper No. 48
`
`571-272-7822
`Date Entered: January 31, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`
`Case IPR2018-00883
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Request for Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`IPR2018-00883
`Patent 8,934,535 B2
`
`
`Unified Patents, Inc. (“Petitioner”) filed a Petition (Paper 2)
`requesting inter partes review of claims 15, 16, 17, 19, 22, and 23 (“the
`challenged claims”) of U.S. Patent No. 8,934,535 (Ex. 1001, “the ʼ535
`Patent”) on April 6, 2018. Realtime Adaptive Streaming, LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 11) on July 1, 2018. We
`instituted inter partes review of all the challenged claims on
`October 11, 2018. Paper 29.
`On January 18, 2019, Patent Owner filed a “Disclaimer in Patent
`under 37 C.F.R. 1.321(a)” with the Patent Office disclaiming claims 15–30
`of the ʼ535 Patent. Ex. 2015. Claims 15–30 include all challenged claims in
`this proceeding. Patent Owner also filed a Notice of Disclaimer of
`Challenged Claims informing the Board that in light of the disclaimer,
`Patent Owner intends to move to terminate the proceeding. Paper 46, 1. On
`January 29, 2019, Patent Owner emailed the Board requesting authorization
`to file such motion to terminate and, on the same day, Petitioner emailed the
`Board opposing the motion. In an email response, we denied Patent
`Owner’s request for authorization to file a motion to terminate the
`proceeding.
` Patent Owner’s disclaimer of claims 15–30 of the ’535 Patent,
`disclaims all claims for which trial was instituted. Under 37 C.F.R.
`§ 42.73(b)(2), actions construed as a request for entry of adverse judgment
`include cancellation or disclaimer of claims such that the party has no
`remaining claim in the trial. Section “42.73(b) gives the Board authority to
`construe a patent owner’s actions as a request for an adverse judgement,
`suggesting the Board’s characterization of the action rather than the patent
`owner’s characterization is determinative.” Arthrex, Inc. v. Smith &
`
`
`
`2
`
`
`
`IPR2018-00883
`Patent 8,934,535 B2
`
`
`Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). “The application of the
`rule on its face does not turn on the patentee’s characterization of its own
`request, and such a construction would make no sense.” Id. Here, we
`construe Patent Owner’s action as a request for entry of adverse judgment
`consistent with § 42.73(b)(2). Thus, entry of judgment adverse to the Patent
`Owner is appropriate.
`
`
`ORDER
`
`It is:
`ORDERED that adverse judgment against Patent Owner in this
`proceeding is entered under 37 C.F.R. § 42.73(b)(2); and
`FURTHER ORDERED that all scheduled Due Dates (see Paper 9) are
`vacated.
`FURTHER ORDERED that this constitutes a Final Written Decision
`under 35 U.S.C. § 318(a).
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-00883
`Patent 8,934,535 B2
`
`
`For PETITIONER:
`Lionel M. Lavenue
`C. Brandon Rash
`James D. Stein
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`lionel.lavenue@finnegan.com
`brandon.rash@finnegan.com
`james.stein@finnegan.com
`
`Ashraf A. Fawzy
`Jonathan Stroud
`Unified Patents Inc.
`afawzy@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`For PATENT OWNER:
`William P. Rothwell
`Kayvan B. Noroozi
`Joel P.N. Stonedale
`Noroozi P.C.
`william@noroozipc.com
`kayvan@noroozipc.com
`joel@noroozipc.com
`
`Neil A. Rubin
`Kent Shum
`Russ, August & Kabat
`nrubin@raklaw.com
`kshum@raklaw.com
`
`
`
`
`4
`
`
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