CoreSource, Inc.v.Quality Healthcare Intermediary, LLC

Patent Trial and Appeal Board

Dec 5, 2014

12773334 (P.T.A.B. Dec. 5, 2014)

Trials@uspto.gov Paper 24
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 CBM2014-00062
Patent 8,036,916 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 CBM2014-00062
Patent 8,036,916 B2

2

On January 28, 2014, CoreSource, Inc. (“Petitioner”) filed a Petition
(Paper 4) requesting review of claims 1, 20, 24, 33, and 35-39 of U.S. Patent
No. 8,036,916 (Ex. 1001, “the ’916 patent”) under the transitional program
for covered business method patents.
1
On July 28, 2014, we instituted trial
on all challenged claims. Paper 10.
Patent Owner, along with its Response dated October 29, 2014 (Paper
23), submits a Motion to Amend (Paper 22) 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 CBM2014-00062
Patent 8,036,916 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,
20, 24, 33, and 35–39 of U.S. Patent No. 8,036,916 is GRANTED; and
FURTHER ORDERED that judgment is entered against Patent Owner
with respect to claims 1, 20, 24, 33, and 35–39 of U.S. Patent No. 8,036,916.

Case CBM2014-00062
Patent 8,036,916 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