Samsung Electronics Co., Ltd.v.Black Hills Media, LLCDownload PDFPatent Trial and Appeal BoardJun 8, 201511566563 (P.T.A.B. Jun. 8, 2015) Copy Citation Trials@uspto.gov Paper No. 20 571.272.7822 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 IPR2014-00721 Patent 7,917,082 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 IPR2014-00721 Patent 7,917,082 B2 2 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 1 and 11 of U.S. Patent No. 7,917,082 B2 (Ex. 1001, “the ’082 patent”). Paper 1 (“Pet.”). Black Hills Media, LLC (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). We granted the Petition as to claims 1 and 11 of the ’082 patent, and instituted trial on three asserted grounds of unpatentability. Paper 10 (“Dec. Inst.”), 16. 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 1 and 11 of the ’082 patent). Paper 19, 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 1 and 11 is granted. A. Related Proceedings Petitioner states that the ’082 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 5, at 2. Petitioner also filed a petition for inter partes review of certain claims of related U.S. Patent No. 7,835,689 B2. IPR2014-00718, Paper 1. We instituted trial in that proceeding. Id. (Paper 11). Patent Owner has filed a motion to amend canceling all involved claims in that proceeding, as well. Id. (Paper 20). IPR2014-00721 Patent 7,917,082 B2 3 B. Grounds of Unpatentability Instituted for Trial We instituted trial based on the following grounds of unpatentability: Reference(s) Basis Claims Challenged Hatlelid1 and Dwek2 § 103 1 and 11 Traversat3 § 103 1 and 11 Multicast Security4 § 103 1 and 11 MOTION TO AMEND II. In its Motion to Amend, Patent Owner seeks to cancel both claims 1 and 11, which are the only claims subject to this proceeding.5 Paper 19, 1. Petitioner did not file an opposition to Patent Owner’s Motion to Amend. Accordingly, Patent Owner’s Motion to Amend canceling claims 1 and 11 of the ’082 patent is granted. 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 1 Hatlelid et al., US 6,772,195 B1, issued Aug. 3, 2004 (Ex. 1003). 2 Dwek, US 6,248,946 B1, issued June 19, 2001 (Ex. 1004). 3 Traversat et al., US 7,065,579 B2, issued June 20, 2006 (Ex. 1005). 4 Gong et al., Multicast Security and Its Extension to a Mobile Environment, 1 WIRELESS NETWORKS 281–95 (1995) (Ex. 1006). 5 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). IPR2014-00721 Patent 7,917,082 B2 4 a request for adverse judgment. See 37 C.F.R. § 42.73(b)(2). Here, Patent Owner requests cancellation of all claims of the ’082 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 1 and 11 of the ’082 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 1 and 11 of the ’082 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. PETITIONER: Andrea Reister Gregory Discher COVINGTON & BURLING LLP areister@cov.com gdischer@cov.com PATENT OWNER: N. Andrew Crain Robert Gravois Kenneth Knox THOMAS HORSTEMEYER LLP andrew.crain@thomashorstemeyer.com robert.gravois@thomashorstemeyer.com kenny.knox@thomashorstemeyer.com Copy with citationCopy as parenthetical citation