RPX Corporationv.ParkerVision, Inc.

Patent Trial and Appeal Board

Oct 29, 2015

09376359 (P.T.A.B. Oct. 29, 2015)

Trials@uspto.gov Paper No. 74
571.272.7822 Entered: October 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
DR. MICHAEL FARMWALD and RPX CORPORATION,
Petitioner,
v.
PARKERVISION, INC.,
Patent Owner.
_______________

Case IPR2014-00946
Patent 6,266,518 B1
_______________

Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
JON B. TORNQUIST, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

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

IPR2014-00946
Patent 6,266,518 B1

I. BACKGROUND
On June 12, 2014, Dr. Michael Farmwald and RPX Corporation
(collectively, “Petitioner”) filed a Petition for inter partes review of U.S.
Patent No. 6,266,518 B1 (“the ’518 patent”). Paper 1. ParkerVision, Inc.
(“Patent Owner”) filed a Preliminary Response on September 24, 2014.
Paper 7. On December 18, 2014, we instituted this inter partes review of
claims 1, 82, 90, and 91 of the ’518 patent. Paper 8.
On March 19, 2015, Patent Owner filed a Response to the Petition
(Paper 27), and on June 26, 2015, Petitioner filed a Reply to Patent Owner’s
Response (Paper 47). The parties requested oral argument (Papers 55, 56),
which was scheduled for August 27, 2015 (Paper 9, 6).
On July 31, 2015, the U.S. Court of Appeals for the Federal Circuit, in
unrelated, parallel litigation involving the ’518 patent, found claims 82, 90,
and 91 invalid. Ex. 2043. In view of the Federal Circuit’s decision, the
parties requested, and we granted, postponement of the oral argument. See
Paper 67, 2. Patent Owner indicated that, if the Federal Circuit’s decision
were upheld, i.e., final, it would request adverse judgment as to all instituted
claims. Id.
On October 2, 2015, the Federal Circuit denied Patent Owner’s
petition for rehearing. Ex. 2044. Subsequently, on October 22, 2015, Patent
Owner filed a Motion for Adverse Judgment Under 37 C.F.R. § 42.73(b)
requesting cancellation of claims 1, 82, 90, and 91 of the ’518 patent.
Paper 73, “Mot.”
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IPR2014-00946
Patent 6,266,518 B1

II. DISCUSSION
Patent Owner’s Motion requests that we cancel claims 1, 82, 90, and
91, and that we terminate this proceeding because each claim pending in this
trial will be cancelled. Mot. 1. Patent Owner indicates that Petitioner does
not oppose Patent Owner’s request for adverse judgment. Id.
A party may request entry of adverse judgment against itself at any
time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as
“a final written decision by the Board, or a termination of a proceeding.”
37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its
Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not
explain why termination is appropriate in this circumstance. See 37 C.F.R.
§ 42.72 (noting that the Board may terminate a trial without rendering a final
written decision “where appropriate,” such as when the trial is consolidated
with another proceeding or pursuant to a settlement under 35 U.S.C.
§ 317(a)).
Under the circumstances presented here, we see no reason not to grant
Patent Owner’s Motion. Additionally, for the reasons discussed above, this
Decision is a Final Written Decision, not a termination of the proceeding.1
III. ORDER
It is:
ORDERED that Petitioner’s Motion for Adverse Judgment Under
37 C.F.R. § 42.73(b) (Paper 73) is granted;
1 See 37 C.F.R. § 42.80 (indicating that after a final written decision by the
Board, the Office will issue and publish a certificate canceling any claim of
the patent finally determined to be unpatentable).
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IPR2014-00946
Patent 6,266,518 B1

FURTHER ORDERED that judgment is entered against Patent Owner
with respect to claims 1, 82, 90, and 91 of the ’518 patent;
FURTHER ORDERED that claims 1, 82, 90, and 91 of the
’518 patent are cancelled; and
FURTHER ORDERED that any party to the proceeding seeking
judicial review of this Final Written Decision must comply with the notice
and service requirements of 37 C.F.R. § 90.2.

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IPR2014-00946
Patent 6,266,518 B1

For PETITIONER:

Todd Baker
CPDocketBaker@oblon.com

James Bailey
jtb@jtbaileylaw.com

For PATENT OWNER:

Robert Greene Sterne
rsterne-PTAB@skgf.com

Michael Q. Lee
mlee-PTAB@skgf.com

Jason E. Stach
jason.stach@finnegan.com

Rick D. Nydegger
rnydegger@wnlaw.com

Byron Pickard
bpickard-PTAB@skgf.com

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