Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 51
`Filed: June 27, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`1964 EARS, LLC,
`Petitioner,
`
`v.
`
`JERRY HARVEY AUDIO HOLDING, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01092
`Patent 9,197,960 B2
`____________
`
`
`Before BRIAN J. McNAMARA, RAMA G. ELLURU, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Motion for Partial Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 51
`Filed: June 27, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`1964 EARS, LLC,
`Petitioner,
`
`v.
`
`JERRY HARVEY AUDIO HOLDING, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01092
`Patent 9,197,960 B2
`____________
`
`
`Before BRIAN J. McNAMARA, RAMA G. ELLURU, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Motion for Partial Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`
`IPR2017-01092
`Patent 9,197,960 B2
`
`
`I. INTRODUCTION
`On March 15, 2017, 1964 EARS, LLC, an Oregon limited liability
`company (“Petitioner”)1, filed a Petition (Paper 1, 5–6 “Pet.”) to institute
`inter partes review of claims 1–18 of U.S. Patent No. 9,197,960 B2
`(Ex. 1001, “the ’960 patent”) on a multiplicity of grounds. On July 6, 2017,
`Jerry Harvey Audio Holdings, LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 7, “Prelim. Resp.”). On October 3, 2017, upon
`consideration of the Petition and Preliminary Response, we instituted inter
`partes review of claims 1–11 and 13–18, but not claim 12 of the ’960 patent.
`Paper 8 (“Decision to Institute”), 2, 70–71; see also 37 C.F.R § 42.1(b);
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1368 (Fed. Cir. 2016).
`On April 24, 2018, the Supreme Court issued its decision in SAS
`Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“the SAS decision”). In view
`of that decision, and the Board’s guidance on the impact of that decision on
`pending proceedings, we modified our Decision to Institute to institute inter
`partes review of all challenged claims on all grounds. Paper 42, 3. To
`accommodate the additional briefing necessitated by this modification, we
`extended the 1-year statutory due date for entering a Final Written Decision
`in this proceeding and entered an Extended Scheduling Order. Papers 44,
`45.
`
`On June 13, 2018, upon authorization, Petitioner filed a Request for
`Partial Adverse Judgment on the following claims and ground:
`
`
`1 Petitioner identifies 1964 Ears LLC, Reshell LLC, Magrepha Sound LLC,
`and Masters Touch 2, LLC, all Washington limited liability companies, 64
`Audio Inc., VIB Marketing Corp., Shell & Casting Corp., Sklar, Inc., and
`Digital Ear Corp., all Washington corporations, as real parties-in-interest.
`
`2
`
`
`
`IPR2017-01092
`Patent 9,197,960 B2
`
`
`Reference(s)
`Harvey ’8062
`Saggio3 & Dahlquist4
`Dombrowski5
`
`Basis
`§ 102
`§ 103
`§ 102
`
`Claim(s)
`Challenged
`
`8
`6, 7, and 9–18
`9
`
`Ground
`4
`8
`10
`
`Paper 48 (“Mot.”), 3. Petitioner’s request for adverse judgment does not
`extend to the originally instituted grounds nor to any of the claims originally
`instituted under those grounds. Id. at 3. Petitioner’s request for adverse
`judgment also does not extend to newly instituted claim 12, nor the grounds
`presented in the Petition for claim 12 other than Ground 8, obviousness
`based on Saggio and Dahlquist. Id. at 5. Our authorization permitted Patent
`Owner to file an Opposition to Petitioner’s motion no later than June 19,
`2018. Paper 50, 5. Patent Owner did not file an opposition. Accordingly,
`for the reasons discussed below, we grant Petitioner’s motion, and enter
`judgment adverse to Petitioner on claim 8 as anticipated by Harvey ’806,
`claims 6, 7, and 9–18 as obvious over Saggio & Dahlquist, and claim 9 as
`anticipated by Dombrowski.
`
`II. ANALYSIS
`Rule 42.73(b) permits a party to “request judgment against itself at
`any time during a proceeding.” 37 C.F.R. § 42.73(b). The Board’s
`
`
`2 U.S. Pat. No. 7,317,806 B2
`3 U.S. Pub. App. 2011/0058702 A1
`4 U.S. Pat. No. 3,824,343
`5 U.S. Pub. App. 2006/0159298 A1
`
`3
`
`
`
`IPR2017-01092
`Patent 9,197,960 B2
`
`guidance6 on the impact of the SAS decision on inter partes reviews allows
`Petitioner to request partial adverse judgment on previously non-instituted
`grounds in order to limit the scope of a proceeding. Specifically, in answer
`to question B12 of the FAQ guidance, which asks, “[i]f the parties cannot
`agree to waive additional claims, is there anything a party can do on its own
`to limit the scope of the proceeding,” the FAQ guidance indicates “[t]he
`Petitioner can request adverse judgment on claims and/or grounds at
`anytime.” See Ex. 1057, B12.
` As discussed above, Petitioner requests adverse judgment on some of
`the claims challenged in grounds 4, 8, and 10 raised in the Petition. Mot. 3.
`Under the circumstances presented here, we find it is appropriate to grant
`Petitioner’s request for adverse judgment on the identified claims raised in
`these grounds because doing so will significantly simplify the issues to be
`addressed at trial.
`Accordingly, for the reasons discussed above, it is:
`
`
`
`
`
`6 “Frequently Asked Questions about SAS Implications (June 5, 2018),
`https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf
`(“FAQ guidance”) (last accessed June 20, 2018). See also Ex. 1057.
`
`4
`
`
`
`IPR2017-01092
`Patent 9,197,960 B2
`
`
`III. ORDER
`
`ORDERED that Petitioner’s request for partial adverse
`judgment is granted; and
`
`FURTHER ORDERED that Petitioner has not shown, by a
`preponderance of evidence, that claim 8 of the ’960 patent is
`unpatentable as anticipated by Harvey ’806;
`
`FURTHER ORDERED that Petitioner has not shown, by a
`preponderance of evidence, that claims 6, 7, and 9–18 of the ’960
`patent are unpatentable as obvious over Saggio & Dahlquist; and
`
`FURTHER ORDERED that Petitioner has not shown, by a
`preponderance of evidence, that claim 9 of the ’960 patent is
`unpatentable as anticipated by Dombrowski.
`
`
`
`
`
`
`5
`
`
`
`IPR2017-01092
`Patent 9,197,960 B2
`
`For PETITIONER:
`Hillary A. Brooks
`Delfina S. Homen
`hillary@brooksquinn.com
`delfina@brooksquinn.com
`
`
`For PATENT OWNER:
`Daniel B. Ravicher
`David J. Garrod
`dan@ravicher.com
`dave@ravicher.com
`
`
`
`
`
`
`
`
`6
`
`
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