ZTE CORPORATION AND ZTE (USA) INC.v.CONTENTGUARD HOLDINGS INC.

Patent Trial and Appeal Board

Nov 19, 2013

10388226 (P.T.A.B. Nov. 19, 2013)

Trials@uspto.gov Paper 36
571-272-7822 Date: November 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ZTE CORPORATION and ZTE (USA) INC.
Petitioner,

v.

CONTENTGUARD HOLDINGS INC.
Patent Owner.
____________

Case IPR2013-00136
Patent 7,359,884
____________

Before JAMESON LEE, MICHAEL W. KIM, and MICHAEL R. ZECHER,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)

Case IPR2013-00136
Patent 7,359,884

2

BACKGROUND
On July 16, 2013, the Board instituted this inter parte review of claims 1-8,
14-22, and 55-62 of patent 7,359,884. Paper 11. On October 23, 2013, the Patent
Owner filed a Motion to Amend Claims. Paper 29. In a telephone conference held
on November 4, 2013, the Patent Owner indicated that it concedes the
unpatentability of original patent claims 1-8, 14-22, and 55-62. Paper 32 at 4. In a
telephone conference held on November 6, 2013, the Patent Owner withdrew its
Motion to Amend Claims, and received authorization to file, by November 15,
2013, a substitute motion to amend claims. Paper 33. On November 15, 2013,
rather than filing a substitute motion to amend claims, the Patent Owner filed a
Request for Entry of Adverse Judgment. Paper 35.
DISCUSSION
A party may request entry of adverse judgment against itself at any time
during a proceeding. 37 C.F.R. § 42.73(b). Even without a request for entry of
adverse judgment, the posture of this proceeding is that the Patent Owner already
has conceded the unpatentability of each claim for which this inter partes review
was instituted, and has no pending motion to amend claims. The deadline for
filing such a motion has passed. Under these circumstances, the Request for Entry
of Adverse Judgment is appropriate.
CONCLUSION
The Patent Owner’s Request for Entry of Adverse Judgment is herein
granted.
It is
ORDERED that claims 1-8, 14-22, and 55-62 are CANCELLED.

Case IPR2013-00136
Patent 7,359,884

3

For Petitioner:
Jon Beaupre
jbeaupre@brinkshofer.com
Miyoung Shin
mshin@brinkshofer.com
Jeremy Snodgrass
jsnodgrass@brinkshofer.com

For Patent Owner:
Robert Sterne
rsterne-PTAB@skgf.com
Jon Wright
Jwright-PTAB@skgf.com