Superior Communications, Inc. v Speculative Product Design, LLC

Patent Trial and Appeal Board

Apr 24, 2014

13282363 (P.T.A.B. Apr. 24, 2014)

Trials@uspto.gov Paper 15
571-272-7822 Entered: April 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SUPERIOR COMMUNICATIONS, INC.
Petitioner

v.

SPECULATIVE PRODUCT DESIGN, LLC
Patent Owner
____________

Case IPR2014-00146
Patent 8,204,561
____________

Before LORA M. GREEN, BENJAMIN D. M. WOOD, and ADAM V. FLOYD,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73

Case IPR2014-00146
Patent 8,204,561
2
Petitioner filed a Petition for inter partes review of claims 1-16 of U.S.
Patent No. 8,204,561 (“the 561 patent”) on November 12, 2013. Paper 4. Patent
Owner filed a Preliminary Response on February 12, 2014. Paper 12.
In a conference call held on April 9, 2014, Petitioner requested authorization
to file a motion to terminate under 37 C.F.R. § 42.73(b)(4). Patent Owner did not
oppose. The panel granted Petitioner authorization to file the motion, and
Petitioner filed the motion to terminate the same day. Paper 14.
Petitioner’s request to terminate the proceeding under 37 C.F.R.
§ 42.73(b)(4) is treated as a statement that it is abandoning the contest, and is thus
requesting adverse judgment against itself. 1 This case is in the preliminary
proceeding2 stage; no institution of a trial has been made. Based on the facts of
this case, it is appropriate to enter judgment, and the proceeding is terminated.3

1 We note that Petitioner states that the Board made reference to estoppel under
35 U.S.C. § 315(b). Paper 14. In fact, we cautioned Petitioner that if it requested
adverse judgment against itself in this proceeding, any additional petition for inter
partes review of the ’561 patent may be denied. See 35 U.S.C. § 325(d) (“In
determining whether to institute or order a proceeding under this chapter, chapter
30, or chapter 31, the Director may take into account whether, and reject the
petition or request because, the same or substantially the same prior art or
arguments previously were presented to the Office.”).
2 A preliminary proceeding begins with the filing of a petition for instituting a trial
and ends with a written decision as to whether trial will be instituted. 37 C.F.R.
§ 42.2.
3 A judgment means a final written decision by the Board, or a termination of a
proceeding. Id.
Case IPR2014-00146
Patent 8,204,561
3
Accordingly, it is
ORDERED, that judgment is entered against Petitioner; and
FURTHER ORDERED, that the proceeding is TERMINATED.

PETITIONER:

Ketan S. Vakil
Andrew S. Flior
SNELL & WILMER L.L.P.
kvakil@swlaw.com
aflior@swlaw.com

PATENT OWNER:

Stephen J. Lieb
Eugene LeDonne
FROMMER LAWRENCE & HAUG LLP
boxspeculative@flhlaw.com