Pucs, Inc.

Patent Trials and Appeals Board

Jan 10, 2022

IPR2021-00811 (P.T.A.B. Jan. 10, 2022)

Trials@uspto.gov Paper 19 571-272-7822 Entered: January 10, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ HULU, LLC, Petitioner, v. PUCS, INC., Patent Owner. ____________ IPR2021-00811 Patent 10,728,619 B2 ____________ Before JONI Y. CHANG, DANIEL J. GALLIGAN and, MICHAEL T. CYGAN, Administrative Patent Judges. CHANG, Administrative Patent Judge. JUDGMENT Granting Request for Adverse Judgment After Institution of Trial 35 C.F.R. § 42.73(b) IPR2021-00811 Patent 10,728,619 B2 2 BACKGROUND Hulu, LLC (“Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of claims 1−12 (“the challenged claims”) of U.S. Patent No. 10,728,619 B2 (Ex. 1001, “the ’619 patent”). Paper 2 (“Pet.”), 2. Pucs, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 9, “Prelim. Resp.”). Patent Owner also filed a First Statutory Disclaimer, disclaiming claims 8−12 of the ’619 patent before institution. Ex. 2004 (First Statutory Disclaimer). In our Institution Decision (Paper 14, “Dec.”), we considered only Petitioner’s unpatentability contentions with respect to the remaining challenged claims-i.e., claims 1−7 of the ’619 patent. Dec. 2 (citing 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”)). Upon consideration of the Petition and Preliminary Response, we instituted a review as to claims 1−7 of the ’619 patent. Dec. 29. After institution, Patent Owner filed a Second Statutory Disclaimer, disclaiming claims 1−7 of the ’619 patent on December 17, 2021. Ex. 2005 (Second Statutory Disclaimer). On the same day, Patent Owner filed a Request for Judgment under 37 C.F.R. § 42.73. Paper 18. DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner IPR2021-00811 Patent 10,728,619 B2 3 disclaims claim 1−7 of the 619 patent, which are all claims for which trial was instituted such that there are no remaining claims in the trial. Ex. 2005, 1. In its Request for Judgment, Patent Owner requests adverse judgment against itself with respect to the claims of the ’619 patent. Paper 18, 1. ORDER Accordingly, it is ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1-7 of the ’619 patent; and FURTHER ORDERED that this proceeding is terminated. IPR2021-00811 Patent 10,728,619 B2 4 PETITIONER: Harper Batts Chris Ponder Jeffrey Liang SHEPPARD, MULLIN, RICHTER & HAMPTON LLP HBatts@sheppardmullin.com, CPonder@sheppardmullin.com, JLiang@sheppardmullin.com, and LegalTM-HU-PUC@sheppardmullin.com FOR PATENT OWNER: John van Loben Sels Joseph Andelin Brian Kim FISH IP LAW LLP jvanlobensels@fishiplaw.com jandelin@fishiplaw.com bkim@fishiplaw.com