`571-272-7822
`
`
`
`
`
` Paper No. 22
`Entered: August 3, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`GOOGLE, LLC,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`_______________
`
`IPR2019-01035
`Patent 9,769,477 B2
`_______________
`
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`JUDGMENT
`Granting Request for Adverse Judgment After
`Institution of Trial
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`On May 6, 2019, Petitioner, Google LLC (“Petitioner”), filed a
`Petition requesting an inter partes review of claims 1, 3, 4, 7, 9, 16, 17, and
`20–22 of U.S. Patent No. 9,769,477 B2 (Ex. 1001, “the ’477 patent”).
`Paper 1. On November 13, 2019, we instituted an inter partes review as to
`all the challenged claims of the ’477 patent. Paper 10.
`On May 8, 2020, Patent Owner filed a “Disclaimer in Patent under
`37 C.F.R. 1.321(a)” with the Patent Office disclaiming claims 1, 3, 4, 7, 9,
`16, 17, and 20–22 of the ʼ477 patent. Ex. 2013. Claims 1, 3, 4, 7, 9, 16, 17,
`and 20–22 include all challenged claims in this proceeding. Pursuant to our
`authorization, Patent Owner also filed a Notice of Disclaimer of Challenged
`Claims informing the Board of the disclaimer. Paper 21, 1.
` Patent Owner’s disclaimer of claims 1, 3, 4, 7, 9, 16, 17, and 20–22
`of the ’477 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 &
`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
`decline to dismiss the proceeding, and instead 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.
`
`
`
`2
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`In consideration of the foregoing, it is
`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 11)
`are vacated.
`FURTHER ORDERED that this constitutes a Final Written Decision
`under 35 U.S.C. § 318(a).
`
`
`
`
`
`3
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`PETITIONER:
`Naveen Modi
`Joseph E. Palys
`Phillip Citroën
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@paulhastings.com
`
`
`PATENT OWNER:
`
`Philip X. Wang
`C. Jay Chung
`Neil A. Rubin
`Kent Shum
`Reza Mirzaie
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`jchung@raklaw.com
`nrubin@raklaw.com
`kshum@raklaw.com
`rmizaie@raklaw.com
`
`
`
`
`
`
`
`4
`
`
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