Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 6
`Entered: June 21, 2016
`
`
`
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DIRECTV, LLC, DISH NETWORK L.L.C., and
`UNIFIED PATENTS INC.,
`Petitioners,
`
`v.
`
`QURIO HOLDINGS, INC.,
`Patent Owner.
`
`
`Cases
`IPR2015-02005 (Petitioner DIRECTV, LLC)
`IPR2016-00007 (Petitioner DISH NETWORK L.L.C.)
`IPR2016-00998 (Petitioner UNIFIED PATENTS INC.)
`Patent 7,787,904 B2
`
`
`
`Before BARBARA A. BENOIT, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`JUDGMENT
`Granting Request for Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`Tel: 571-272-7822
`
`Paper 6
`Entered: June 21, 2016
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DIRECTV, LLC, DISH NETWORK L.L.C., and
`UNIFIED PATENTS INC.,
`Petitioners,
`
`v.
`
`QURIO HOLDINGS, INC.,
`Patent Owner.
`
`
`Cases
`IPR2015-02005 (Petitioner DIRECTV, LLC)
`IPR2016-00007 (Petitioner DISH NETWORK L.L.C.)
`IPR2016-00998 (Petitioner UNIFIED PATENTS INC.)
`Patent 7,787,904 B2
`
`
`
`Before BARBARA A. BENOIT, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`JUDGMENT
`Granting Request for Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`
`Cases IPR2015-02005, IPR2016-00007, IPR2016-00998
`Patent 7,787,904 B2
`
`
`I. BACKGROUND
`In DIRECTV, LLC v. Qurio Holdings, Inc., Case IPR2015-02005,
`Petitioner, DIRECTV, LLC, filed a substitute Petition for inter partes review
`of claims 1–3, 10, 12, and 15–18 of U.S. Patent No. 7,787,904 B2 (“the ’904
`patent”). Paper 3. Patent Owner, Qurio Holdings, Inc., filed a Preliminary
`Response. Paper 7. On April 4, 2016, we instituted an inter partes review
`of all of the challenged claims. Paper 9. On May 31, 2016, Patent Owner
`filed a corrected Request for Adverse Judgment, asking the Board to cancel
`claims 1–3, 10, 12, and 15–18 of the ’904 patent, which constitute all of the
`claims at issue in IPR2015-02005. Paper 13 (“Request for Adverse
`Judgment – corrected 2”).
`In DISH Network L.L.C. v. Qurio Holdings, Inc., Case
`IPR2016-00007, Petitioner, DISH Network L.L.C., filed a Petition for inter
`partes review of claims 1–4, 7, 10, 12–18, and 20 of the ’904 patent.
`Paper 1. Patent Owner filed a Preliminary Response. Paper 5. On
`April 4, 2016, we instituted an inter partes review of all of the challenged
`claims. Paper 6. On May 31, 2016, Patent Owner filed a corrected Request
`for Adverse Judgment, asking the Board to cancel claims 1–4, 7, 10, 12–18,
`and 20 of the ’904 patent, which constitute all of the claims at issue in
`IPR2016-00007. Paper 10 (“Request for Adverse Judgment – corrected 2”).
`On May 4, 2016, in Unified Patents Inc. v. Qurio Holdings, Inc.,
`Case IPR2016-00998, Petitioner, Unified Patents Inc., filed a Petition for
`inter partes review of claims 1–3, 10, 12, and 15–18 of the ’904 patent.
`Paper 2. Unified Patents Inc. concurrently filed a Motion for Joinder,
`requesting “silent party joinder” with the inter partes review of the
`’904 patent in IPR2015-02005. Paper 3.
`
`2
`
`
`
`Cases IPR2015-02005, IPR2016-00007, IPR2016-00998
`Patent 7,787,904 B2
`
`
`II. DISCUSSION
`A party may request adverse judgment against itself at any time.
`37 C.F.R. § 42.73(b). In IPR2015-02005 and IPR2016-00007, Patent Owner
`requests adverse judgment and the cancellation of all of the claims on which
`inter partes review was instituted. Thus, after the cancellation of the
`specified claims of the ’904 patent, no claims would remain in either inter
`partes review. Under these circumstances, the Requests for Adverse
`Judgment are appropriate. Therefore, we grant Patent Owner’s requests and
`enter judgment in IPR2015-02005 and IPR2016-00007 against Patent Owner
`under 37 C.F.R. § 42.73(b).
`In IPR2016-00998, the Board has not instituted inter partes review.
`After the cancellation of the requested claims, none of the claims challenged
`in IPR2016-00998 would remain. Even without an express request from
`Patent Owner to terminate this proceeding, Patent Owner’s request to cancel
`all of the challenged claims leaves nothing to be decided with regard to
`patentability of the challenged claims and would have no practical effect.
`Moreover, under 37 C.F.R. § 42.73(b)(2), cancellation of a claim such that
`the party has no remaining claim in the trial is to be construed as a request
`for adverse judgment. Therefore, it is appropriate to dismiss Unified
`Patents Inc.’s Petition and Motion for Joinder as moot and to enter judgment
`in IPR2016-00998 against Patent Owner under 37 C.F.R. § 42.73(b). See
`also 37 C.F.R. § 42.5(a) (“The Board may determine a proper course of
`conduct in a proceeding for any situation not specifically covered by this
`part . . . .”); 37 C.F.R. § 42.71(a) (“The Board . . . may . . . dismiss any
`petition. . . .”).
`
`3
`
`
`
`Cases IPR2015-02005, IPR2016-00007, IPR2016-00998
`Patent 7,787,904 B2
`
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s request for adverse judgment in
`IPR2015-02005 is granted, and judgment is entered against Patent Owner in
`IPR2015-02005 under 37 C.F.R. § 42.73(b) with respect to claims 1–3, 10,
`12, and 15–18 of the ’904 patent;
`FURTHER ORDERED that Patent Owner’s request for adverse
`judgment in IPR2016-00007 is granted, and judgment is entered against
`Patent Owner in IPR2016-00007 under 37 C.F.R. § 42.73(b) with respect to
`claims 1–4, 7, 10, 12–18, and 20 of the ’904 patent;
`FURTHER ORDERED that claims 1–4, 7, 10, 12–18, and 20 of
`U.S. Patent No. 7,787,904 B2 are CANCELLED;
`FURTHER ORDERED that Unified Patents Inc.’s Petition (Paper 2)
`and Motion for Joinder (Paper 3) filed in IPR2016-00998 are dismissed as
`moot;
`FURTHER ORDERED that judgment is entered against Patent Owner
`in IPR2016-00998 under 37 C.F.R. § 42.73(b) with respect to claims 1–3,
`10, 12, and 15–18 of the ’904 patent; and
`FURTHER ORDERED that a copy of this Decision is to be entered
`into the file of Cases IPR2015-02005, IPR2016-00007, and IPR2016-00998.
`
`
`
`
`4
`
`
`
`Cases IPR2015-02005, IPR2016-00007, IPR2016-00998
`Patent 7,787,904 B2
`
`PETITIONER:
`Thomas Millikan
`Kevin Patariu
`Joseph Reid
`Bing Ai
`Stephen Brookman
`PERKINS COIE LLP
`tmillikan@perkinscoie.com
`kpatariu@perkinscoie.com
`jreid@perkinscoie.com
`ai-ptab@perkinscoie.com
`sbrookman@perkinscoie.com
`
`Eliot D. Williams
`G. Hopkins Guy III
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`hop.guy@bakerbotts.com
`
`P. Andrew Riley
`Christopher C. Johns
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`andrew.riley@finnegan.com
`qurio904-ipr@finnegan.com
`
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`
`PATENT OWNER:
`Robert Renke
`QURIO HOLDINGS, INC.
`robert.renke@flashpoint.com
`
`
`5
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