RPX Corporationv.ParkerVision, Inc.Download PDFPatent Trial and Appeal BoardOct 29, 201509376359 (P.T.A.B. Oct. 29, 2015) Copy Citation 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.” 2 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). 3 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. 4 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 5 Copy with citationCopy as parenthetical citation