Samsung Electronics Co., Ltd.v.Black Hills Media, LLC

Patent Trial and Appeal Board

Jun 8, 2015

11566552 (P.T.A.B. Jun. 8, 2015)

Trials@uspto.gov Paper No. 21
571.272.7822 Entered: June 8, 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,
Petitioner,

v.

BLACK HILLS MEDIA, LLC,
Patent Owner.
____________

Case IPR2014-00718
Patent 7,835,689 B2
____________

Before BRIAN J. McNAMARA, DAVID C. McKONE, and
TINA E. HULSE, Administrative Patent Judges.

HULSE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2014-00718
Patent 7,835,689 B2
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INTRODUCTION I.
Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
and Samsung Telecommunications America, LLC (collectively “Petitioner”)
filed a Petition requesting an inter partes review of claims 9 and 10 of U.S.
Patent No. 7,835,689 B2 (Ex. 1001, “the ’689 patent”). Paper 1 (“Pet.”).
Black Hills Media, LLC (“Patent Owner”) filed a Preliminary Response to
the Petition. Paper 7 (“Prelim. Resp.”). We granted the Petition as to claims
9 and 10 of the ’689 patent, and instituted trial on three asserted grounds of
unpatentability. Paper 11 (“Dec. Inst.”), 18.
After institution of trial, Patent Owner filed a Motion to Amend,
requesting the cancellation of all claims involved in this inter partes review
proceeding (i.e., claims 9 and 10 of the ’689 patent). Paper 20, 1. Petitioner
did not file an opposition to Patent Owner’s Motion to Amend.
The Board has jurisdiction under 35 U.S.C. § 6(c). This Decision is a
final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Patent Owner’s Motion to Amend requesting cancellation of claims 9
and 10 is granted.
A. Related Proceedings
Petitioner states that the ’689 patent is currently the subject of a
copending district court case against Petitioner captioned, Black Hills Media,
LLC v. Samsung Electronics Co., Ltd., No. 2-13-cv-00379 (E.D. Tex.).
Pet. 1; see also Paper 6, at 2.
Petitioner also filed a petition for inter partes review of certain claims
of related U.S. Patent No. 7,917,082 B2. IPR2014-00721, Paper 1. We
instituted trial in that proceeding. Id. (Paper 10). Patent Owner has filed a
motion to amend canceling all involved claims in that proceeding, as well.
Id. (Paper 19).
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Patent 7,835,689 B2
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B. Grounds of Unpatentability Instituted for Trial
We instituted trial based on the following grounds of unpatentability:
References Basis Claims Challenged
Yeager1 and P2P Networking2 § 103 9 and 10
Busam3 and Phillips4 § 103 9 and 10
Abecassis5 and Ganesan6 § 103 9 and 10

MOTION TO AMEND II.
In its Motion to Amend, Patent Owner seeks to cancel both claims 9
and 10, which are the only claims subject to this proceeding.7 Paper 20, 1.
Petitioner did not file an opposition to Patent Owner’s Motion to Amend.
Accordingly, Patent Owner’s Motion to Amend canceling claims 9 and 10 of
the ’689 patent is granted.

1 Yeager et al., US 7,383,433 B2, issued June 3, 2008 (Ex. 1003).
2 Parameswaran et al., P2P Networking: An Information-Sharing
Alternative, 34 COMPUTER 31–38 (July 2001) (Ex. 1005).
3 Busam et al., US 2002/0087887 A1, published July 4, 2002 (Ex. 1006).
4 Phillips et al., US 7,058,696 B1, issued June 6, 2006 (Ex. 1007).
5 Abecassis, US 6,192,340 B1, issued Feb. 20, 2001 (Ex. 1008).
6 Ganesan, US 5,535,276, issued July 9, 1996 (Ex. 1009).
7 We note that Patent Owner did not request a conference call with the Board
before filing its Motion to Amend, as required by 37 C.F.R. § 42.121(a).
Under the circumstances of this case, we exercise our discretion and
determine that it is appropriate to waive the requirements of this rule.
See 37 C.F.R. § 42.5(b).
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Patent 7,835,689 B2
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Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment
against itself at any time during a proceeding. We construe the cancellation
of claims such that the patent owner has no remaining claim in the trial to be
a request for adverse judgment. See 37 C.F.R. § 42.73(b)(2). Here, Patent
Owner requests cancellation of all claims of the ’689 patent on which a trial
was instituted, such that Patent Owner would have no remaining claim in the
trial. Thus, it is appropriate to enter judgment at this time.
ORDER III.
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s Motion to Amend requesting
cancellation of claims 9 and 10 of the ’689 patent is treated as a request for
adverse judgment and is granted;
FURTHER ORDERED that judgment is entered against Patent Owner
with respect to claims 9 and 10 of the ’689 patent; and
FURTHER ORDERED that because this is a Final Decision, parties
to the proceeding seeking judicial review of the Decision must comply with
the notice and service requirements of 37 C.F.R. § 90.2.

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Patent 7,835,689 B2
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PETITIONER:
Andrea Reister
Gregory Discher
COVINGTON & BURLING LLP
areister@cov.com
gdischer@cov.com

PATENT OWNER:
N. Andrew Crain
Robert Gravois
Kenneth Knox
Thomas Engellenner
THOMAS HORSTEMEYER LLP
andrew.crain@thomashorstemeyer.com
robert.gravois@thomashorstemeyer.com
kenny.knox@thomashorstemeyer.com
engellennert@pepperlaw.com