Cellco Partnership dba Verizon Wirelessv.Orlando Communications LLC

Patent Trial and Appeal Board

Feb 24, 2016

08315345 (P.T.A.B. Feb. 24, 2016)

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 IPR2015-01567
Patent 5,687,196
____________

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

IPR2015-01567
Patent 5,687,196

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 12, 13, 14, and 16 of U.S. Patent No. 5,687,196 (Ex. 1001, “the ’196
patent”). Paper 2. Patent Owner, Orlando Communications LLC, did not
file a Preliminary Response. We instituted inter partes review of claims 12–
14 and 16 of the ’196 patent. Paper 18.
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, IPR2015–01567.1 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.*.
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Patent 5,687,196

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(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 12–14 and 16 of U.S. Patent No. 5,687,196 is
GRANTED; and
FURTHER ORDERED that, at the request of the Patent Owner,
judgment is entered herein against Patent Owner with respect to claims 12–
14 and 16 of U.S. Patent No. 5,687,196. A certificate canceling claims 12–
14 and 16 of U.S. Patent No. 5,687,196 shall issue in due course.
IPR2015-01567
Patent 5,687,196

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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