`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
`
`
`
`
`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,
`
`
`
`2
`
`
`
`IPR2014-00711
`IPR2015-00338
`Patent 8,320,099 B2
`
`
`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,
`
`
`
`3
`
`
`
`IPR2014-00711
`IPR2015-00338
`Patent 8,320,099 B2
`
`
`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
`
`
`
`
`4
`
`
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