LG Electronics, Inc.v.Black Hills Media, LLC

Patent Trial and Appeal Board

Apr 22, 2015

11563232 (P.T.A.B. Apr. 22, 2015)

Trials@uspto.gov
571-272-7822 
Paper 24
Date Entered: April 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC., and
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
and
LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and
LG ELECTRONICS MOBILECOMM U.S.A., INC.,
Petitioners,
v.
BLACK HILLS MEDIA, LLC,
Patent Owner.
____________

Case IPR2014-00737
Case IPR2015-00334
Patent 8,050,652 B2
____________

Before BRIAN J. McNAMARA, FRANCES L. IPPOLITO, and
TINA E. HULSE, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73
IPR2014-00737
IPR2015-00334
Patent 8,050,652 B2

2 

BACKGROUND
On May 8, 2014, Petitioner Samsung Electronics Co., Ltd., Samsung
Electronics America, Inc., and Samsung Telecommunications America, LLC
(collectively, “Petitioner Samsung”) filed a Petition seeking inter partes
review of claims 1, 3, 4, 6, 7, 10, 11, 13, 42, 44, 45, 47–50, 52 and 55 of
U.S. Patent No. 8,050,652 B2 (“the ’652 patent”). On November 4, 2014,
we instituted inter partes review of claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45,
47, 48, 50, 52, and 55 of the ’652 patent in IPR2014-00737. Paper 7, 22–23.
On December 3, 2014, Petitioner LG Electronics, Inc., LG Electronics
U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc. (collectively,
“Petitioner LG”) filed a Petition for inter partes review of claims 1, 3, 4, 6,
7, 10, 11, 13, 42, 44, 45, 47–50, 52 and 55 of the ’652 patent (IPR2015-
00334, Paper 2), and a Motion for Joinder to IPR2014-00737 (IPR2015-
00334, Paper 3). On January 28, 2015, we instituted inter partes review of
claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 of the ’652
patent in IPR2015-00334 and granted Petitioner LG’s motion for joinder of
IPR2015-00334 with previously instituted IPR2014-00737. IPR2014-
00737, Paper 16, 3–4. In that Decision, the ground on which IPR2014-
00737 was instituted was unchanged, no other grounds were instituted in the
joined proceeding, and the Scheduling Order in place for IPR2014-00737
(Paper 12) was unchanged and applied to the joined proceeding. Id. at 4.
We also terminated the IPR2015-00334 proceeding. Id. at 4.
Pursuant to the Scheduling Order, on February 4, 2015, Patent Owner
filed its Response. Paper 17. Patent Owner did not file a motion to amend.
On April 3, 2015, Patent Owner filed a Request for Adverse Judgment,
IPR2014-00737
IPR2015-00334
Patent 8,050,652 B2

3 

Paper 23, requesting adverse judgment pursuant to 37 C.F.R. § 42.73(b),
with respect to the claims that are the subject of this joined proceeding:
Patent Owner . . . hereby requests that the Board cancel
claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 of
U.S. Patent No. 8,050,652 (“the ’652 Patent”). These claims
are all claims for which the present inter partes review has been
instituted. See Decision – Institution of Inter Partes Review,
Paper 7, p. 22. See also Decision – Institution of Inter Partes
Review and Grant of Motion for Joinder, Paper 16.

In view of the cancellation of all claims remaining in the
trial, Patent Owner requests that the Board enter adverse
judgment against Patent Owner in this proceeding pursuant to
37 C.F.R. §42.73(b)(2).

Paper 23, 1. Petitioner Samsung and Petitioner LG have not filed any reply
to the Patent Owner’s Response.
DISCUSSION
A party may request entry of adverse judgment against itself at any
time during a proceeding. See 37 C.F.R. § 42.73(b). Patent Owner has
conceded that the requested judgment effectively will cancel the claims
identified for trial and moot this proceeding. Paper 23, 1. There is no
pending motion to amend claims, and the deadline for filing such a motion
has passed. See Paper 12. Patent Owner also has indicated by email to the
Board that Petitioners have no objection to the Request for Adverse
Judgment. Under these circumstances, the request for entry of adverse
judgment is appropriate.
ORDER
It is ORDERED that Patent Owner’s request for adverse judgment
under 37 C.F.R. § 42.73(b) with respect to claims 1, 3, 4, 6, 7, 10, 13, 42, 44,
IPR2014-00737
IPR2015-00334
Patent 8,050,652 B2

4 

45, 47, 48, 50, 52, and 55 of U.S. Patent No. 8,050,652 B2 is GRANTED;
and,
ORDERED that judgment is entered herein against Patent Owner with
respect to claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47, 48, 50, 52, and 55 of
U.S. Patent No. 8,050,652 B2. Claims 1, 3, 4, 6, 7, 10, 13, 42, 44, 45, 47,
48, 50, 52, and 55 are unpatentable, and shall be cancelled.

PETITIONER:

Andrea G. Reister
Gregory S. Discher
COVINGTON & BURLING LLP
areister@cov.com
gdischer@cov.com

Doris Johnson Hines
Jonathan R.K. Stroud
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
dori.hines@finnegan.com
jonathan.stroud@finnegan.com

PATENT OWNER:

Thomas Engellenner
Reza Mollaaghababa
PEPPER HAMILTON LLP
engellennert@pepperlaw.com
mollaaghababar@pepperlaw.com

Christopher Horgan
CONCERT TECHNOLOGY
chris.horgan@concerttechnology.com