13207113 (P.T.A.B. Apr. 23, 2015)

Samsung Electronics Co., Ltd.v.Black Hills Media, LLC

Patent Trial and Appeal BoardApr 23, 2015

13207113 (P.T.A.B. Apr. 23, 2015)

Trials@uspto.gov 571-272-7822 Paper 24 Date Entered: April 23, 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 IPR2014-00723 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 2 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. IPR2014-00723 IPR2015-00339 Patent 8,214,873 B2 3 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. IPR2014-00723 IPR2015-00339 Patent 8,214,873 B2 4 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, 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. IPR2014-00723 IPR2015-00339 Patent 8,214,873 B2 5 PETITIONERS: Andrea Reister areister@cov.com Gregory Discher gdischer@cov.com Doris Johnson Hines dori.hines@finnegan.com Jonathan Stroud jonathan.stroud@finnegan.com PATENT OWNER: Lana Gladstein gladsteinl@pepperlaw.com Reza Mollaaghababa mollaaghababar@pepperlaw.com Thomas Engellenner engellennert@pepperlaw.com Christopher Horgan chris.horgan@concerttechnology.com

Samsung Electronics Co., Ltd. v. Black Hills Media, LLC