CoreSource, Inc.v.Quality Healthcare Intermediary, LLCDownload PDFPatent Trial and Appeal BoardDec 5, 201413178174 (P.T.A.B. Dec. 5, 2014) Copy Citation Trials@uspto.gov Paper 26 Tel: 571-272-7822 Entered: December 5, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ CORESOURCE, INC., Petitioner, v. QUALITY HEALTHCARE INTERMEDIARY, LLC, Patent Owner. _______________ Case CBM2014-00063 Patent 8,489,420 B2 _______________ Before JAMESON LEE, JUSTIN BUSCH, and BARBARA A. PARVIS, Administrative Patent Judges. PARVIS, Administrative Patent Judge. JUDGMENT 37 C.F.R. § 42.73(b) Case CBM2014-00063 Patent 8,489,420 B2 2 On January 28, 2014, CoreSource, Inc. (“Petitioner”) filed a Petition (Paper 1) requesting review of claims 1, 22, 26, 34, 36-39, and 54–57 of U.S. Patent No. 8,489,420 (Ex. 1001, “the ’420 patent”) under the transitional program for covered business method patents. 1 On July 28, 2014, we instituted trial on all challenged claims. Paper 9. Patent Owner, along with its Response dated October 29, 2014 (Paper 25), submits a Motion to Amend (Paper 24) cancelling all of the challenged claims. In its Response, Patent Owner contends that Petitioner’s challenges have been rendered moot and requests that we enter an order terminating this proceeding. Patent Owner, however, has not provided a sufficient showing that this proceeding should be terminated. Cancellation of all challenged claims does not render moot the challenge. Rather, it is the objective of the challenge. In that connection, a conference call was held on December 4, 2014, among respective counsel for the parties and Judges Lee, Busch, and Parvis. During that call, Petitioner requested that the Board enter adverse judgment against the Patent Owner under 37 C.F.R. § 42.73(b). Patent Owner did not object. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include cancellation of a claim such that the party has no remaining claim in the trial. As Patent Owner has cancelled all challenged claims, Patent Owner has no remaining claim in the covered business method patent review. 1 See § 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011) (“AIA”). Case CBM2014-00063 Patent 8,489,420 B2 3 We regard Patent Owner’s cancellation of all challenged claims as a request for entry of adverse judgment against the Patent Owner. We grant Patent Owner’s Motion to Amend and, on that basis, enter judgment against the Patent Owner. Accordingly, it is hereby ORDERED that Patent Owner’s Motion to Amend to cancel claims 1, 22, 26, 34, 36–39, and 54–57 of U.S. Patent No. 8,489,420 is GRANTED; and FURTHER ORDERED that judgment is entered against Patent Owner with respect to claims 1, 22, 26, 34, 36–39, and 54–57 of U.S. Patent No. 8,489,420. Case CBM2014-00063 Patent 8,489,420 B2 4 FOR PETITIONER: Mark E. Nikolsky McCARTER & ENGLISH, LLP mnikolsky@mccarter.com Thomas S. Reynolds II HANSEN REYNOLDS DICKINSON CRUGER LLC treynolds@hdrclaw.com FOR PATENT OWNER: Eric J. Maiers Howard E. Silverman Kevin J. O’Shea Keith R. Jarosik GREENBERG TRAURIG, LLP chiipmail@gtlaw.com maierse@gtlaw.com silvermanh@gtlaw.com osheak@gtlaw.com jarosikk@gtlaw.com Copy with citationCopy as parenthetical citation
