Cellco Partnership d/b/a Verizon Wirelessv.Orlando Communications LLCDownload PDFPatent Trial and Appeal BoardFeb 24, 201608991587 (P.T.A.B. Feb. 24, 2016) Copy Citation Trials@uspto.gov Paper 22 571-272-7822 Date Entered: February 24, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS, T-MOBILE US, INC. and T-MOBILE USA, INC., SPRINT SPECTRUM, L.P. and SPRINT CORPORATION, and AT&T MOBILITY LLC, Petitioners, v. ORLANDO COMMUNICATIONS LLC, Patent Owner. ____________ Case IPR2015-01573 Patent 6,009,553 ____________ Before JONI Y. CHANG, GREGG I. ANDERSON, and WILLIAM M. FINK, Administrative Patent Judges. FINK, Administrative Patent Judge. JUDGMENT Termination of the Proceeding 37 C.F.R. § 42.73 IPR2015-01573 Patent 6,009,553 2 I. INTRODUCTION Petitioners, Cellco Partnership d/b/a Verizon Wireless, T-Mobile US, Inc. and T-Mobile USA, Inc., Sprint Spectrum, L.P., Sprint Corporation, and AT&T Mobility LLC, filed a Petition requesting an inter partes review of claims 1, 2, 5, 8, and 9 of U.S. Patent No. 6,009,553 (Ex. 1001, “the ’553 patent”). Paper 3. Patent Owner, Orlando Communications LLC, did not file a Preliminary Response. We instituted inter partes review of claims 1, 2, 5, 8, and 9 of the ’553 patent. Paper 19. As authorized by the Board in e-mail correspondence of February 18, 2016, Patent Owner filed a Motion Requesting Adverse Judgment in the above identified proceeding, IPR2015–01573.1 Paper 21 (“Motion”). In its Motion, Patent Owner represents that it filed a statutory disclaimer, pursuant to 35 U.S.C. § 253 and 37 C.F.R. § 1.321(a), to disclaim those claims upon which inter partes review was instituted. Motion 2. Patent Owner filed a copy of the “as-filed disclaimer, including the electronic filing receipt and fee transmittal” as Exhibit 2001. Id.; Ex. 2001. II. ANALYSIS As set forth in 37 C.F.R. § 42.73: (b) Request for adverse judgment. A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include: . . . 1 The Board appreciates counsel for Patent Owner’s explanation that he was not made aware of the conference call scheduled for February 18th due to a typographical error in his email address notifying counsel of the conference call. See Motion 2 n.*. IPR2015-01573 Patent 6,009,553 3 (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. We have reviewed Patent Owner’s Motion and Exhibit 2001, and we determine that Patent Owner has satisfied the requirements set forth in 37 C.F.R. § 42.73(b)(2) such that “the party has no remaining claim in the trial.” Patent Owner represents that it does not believe Petitioner opposes the Motion. Motion 3. In the email authorizing the instant Motion, Petitioner was instructed to contact the Board immediately if it sought to oppose Patent Owner’s Motion and thus far has not so indicated its opposition. Accordingly, given Patent Owner’s filing of disclaimer of all claims at issue in the above identified proceeding, and Petitioner’s non- opposition to Patent Owner’s Motion, we grant Patent Owner’s request and enter adverse judgment under 37 C.F.R. § 42.73. III. ORDER Accordingly, it is ORDERED that Patent Owner’s Motion Requesting Adverse Judgment under 37 C.F.R. § 42.73 against Orlando Communications LLC with respect to claims 1, 2, 5, 8, and 9 of U.S. Patent No. 6,009,553 is GRANTED; and FURTHER ORDERED that, at the request of the Patent Owner, judgment is entered herein against Patent Owner with respect to claims 1, 2, 5, 8, and 9 of U.S. Patent No. 6,009,553. A certificate canceling claims 1, 2, 5, 8, and 9 of U.S. Patent No. 6,009,553 shall issue in due course. IPR2015-01573 Patent 6,009,553 4 For Petitioners: Kevin P. Anderson Floyd B. Chapman Scott A. Felder WILEY REIN LLP kanderson@wileyrein.com fchapman@wileyrein.com sfelder@wileyrein.com Leo Lam KEKER & VAN NEST LLP llam@kvn.com Kathleen D. Fitterling ERISE IP, P.A. kathleen.fitterling@eriseip.com Samir Bhavsar John F. Gaustad BAKER BOTTS LLP samir.bhavsar@bakerbotts.com john.gaustad@bakerbotts.com For Patent Owner: Matthew C. Phillips Derek Meeker RENAISSANCE IP LAW GROUP LLP matthew.phillips@renaissanceiplaw.com derek.meeker@renaissanceiplaw.com Copy with citationCopy as parenthetical citation
