Samsung Electronics Co., Ltd.v.Black Hills Media, LLC

Patent Trial and Appeal BoardApr 23, 2015

12114286 (P.T.A.B. Apr. 23, 2015)

Trials@uspto.gov 571-272-7822 Paper 24 Date Entered: April 23, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, and LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG ELECTRONICS MOBILECOMM U.S.A., INC., Petitioners, v. BLACK HILLS MEDIA, LLC, Patent Owner. ____________ Case IPR2014-00711 Case IPR2015-00338 Patent 8,320,099 B2 ____________ Before BRIAN J. McNAMARA, PETER P. CHEN, and FRANCES L. IPPOLITO, Administrative Patent Judges. McNAMARA, Administrative Patent Judge. JUDGMENT Termination of the Proceeding 37 C.F.R. § 42.73 IPR2014-00711 IPR2015-00338 Patent 8,320,099 B2 2 BACKGROUND On April 30, 2014, Petitioner Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Petitioner Samsung”) filed a Petition (Paper 1) seeking inter partes review of claims 1 and 10–12 of U.S. Patent No. 8,320,099 B2 (“the ’099 patent”). On November 4, 2014, we instituted inter partes review of claims 10–12 of U.S. Patent No. 8,230,099 B2 in IPR2014- 00711. Paper 7, 20–21. On December 3, 2014, Petitioner LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc. (collectively, “Petitioner LG”) filed a Petition for inter partes review of claims 1 and 10–12 of the ’099 patent (Paper 2), and a Motion for Joinder to IPR2014-00711 (Paper 3). On January 28, 2015, we instituted inter partes review of claims 10– 12 of the ’099 patent in IPR2015-00338 and granted Petitioner LG’s motion for joinder of IPR2015-00338 with previously instituted IPR2014-00711. IPR2014-00711, Paper 16, 3–4. In that Decision, the grounds on which IPR2014-00711 was instituted were unchanged, no other grounds were instituted in the joined proceeding, and the Scheduling Order in place for IPR2014-00711 (Paper 12) was unchanged and applied to the joined proceeding. IPR2014-00711, Paper 16 at 4. We also terminated the IPR2015-00338 proceeding. Id. at 4. Pursuant to the Scheduling Order, on February 4, 2015, Patent Owner filed its Response. Paper 17. Patent Owner did not file a motion to amend. On April 3, 2015, Patent Owner filed a Request for Adverse Judgment, IPR2014-00711 IPR2015-00338 Patent 8,320,099 B2 3 Paper 23, requesting adverse judgment pursuant to 37 C.F.R. § 42.73(b), with respect to the claims that are the subject of this joined proceeding: Patent Owner . . . hereby requests that the Board cancel claims 10–12 of U.S. Patent No. 8,230,099 (“the ‘099 Patent”). These claims are all claims for which the present inter partes review has been instituted. See Decision – Institution of Inter Partes Review, Paper 7, pp. 20–21. See also Decision – Institution of Inter Partes Review and Grant of Motion for Joinder, Paper 16. In view of the cancellation of all claims remaining in the trial, Patent Owner requests that the Board enter adverse judgment against Patent Owner in this proceeding pursuant to 37 C.F.R. §42.73(b)(2). Paper 23, 1. Petitioner Samsung and Petitioner LG have not filed any reply to the Patent Owner’s Response. DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. See 37 C.F.R. § 42.73(b). Patent Owner has conceded that the requested judgment effectively will cancel the claims identified for trial and moot this proceeding. Paper 23, 1. There is no pending motion to amend claims. See Paper 16. Patent Owner also has indicated by email to the Board that Petitioners have no objection to the Request for Adverse Judgment. Under these circumstances, the request for entry of adverse judgment is appropriate. ORDER It is ORDERED that Patent Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b) with respect to claims 10–12 of U.S. Patent No. 8,230,099 B2 is GRANTED; and, IPR2014-00711 IPR2015-00338 Patent 8,320,099 B2 4 ORDERED that judgment is entered herein against Patent Owner with respect to claims 10–12 of U.S. Patent No. 8,230,099 B2. Claims 10–12 of U.S. Patent No. 8,230,099 B2 are not patentable, and shall be cancelled. PETITIONERS: Andrea Reister areister@cov.com Gregory Discher gdischer@cov.com Doris Johnson Hines dori.hines@finnegan.com Jonathan Stroud jonathan.stroud@finnegan.com PATENT OWNER: Reza Mollaaghababa mollaaghababar@pepperlaw.com Thomas Engellenner engellennert@pepperlaw.com Christopher Horgan chris.horgan@concerttechnology.com

Samsung Electronics Co., Ltd. v. Black Hills Media, LLC