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

Patent Trial and Appeal Board

Apr 23, 2015

12114286 (P.T.A.B. Apr. 23, 2015)

Trials@uspto.gov
571-272-7822 
Paper 24
Date Entered: April 23, 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 IPR2014-00711
Case IPR2015-00338
Patent 8,320,099 B2
____________

Before BRIAN J. McNAMARA, PETER P. CHEN, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73
IPR2014-00711
IPR2015-00338
Patent 8,320,099 B2

2 

BACKGROUND
On April 30, 2014, Petitioner Samsung Electronics Co., Ltd.,
Samsung Electronics America, Inc., and Samsung Telecommunications
America, LLC (collectively, “Petitioner Samsung”) filed a Petition (Paper 1)
seeking inter partes review of claims 1 and 10–12 of U.S. Patent No.
8,320,099 B2 (“the ’099 patent”). On November 4, 2014, we instituted inter
partes review of claims 10–12 of U.S. Patent No. 8,230,099 B2 in IPR2014-
00711. Paper 7, 20–21. 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 and 10–12 of the ’099 patent (Paper 2), and a Motion for Joinder to
IPR2014-00711 (Paper 3).
On January 28, 2015, we instituted inter partes review of claims 10–
12 of the ’099 patent in IPR2015-00338 and granted Petitioner LG’s motion
for joinder of IPR2015-00338 with previously instituted IPR2014-00711.
IPR2014-00711, Paper 16, 3–4. In that Decision, the grounds on which
IPR2014-00711 was instituted were unchanged, no other grounds were
instituted in the joined proceeding, and the Scheduling Order in place for
IPR2014-00711 (Paper 12) was unchanged and applied to the joined
proceeding. IPR2014-00711, Paper 16 at 4. We also terminated the
IPR2015-00338 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,
IPR2014-00711
IPR2015-00338
Patent 8,320,099 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 10–12
of U.S. Patent No. 8,230,099 (“the ‘099 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, pp. 20–21.
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. See Paper 16. 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 10–12 of U.S. Patent No.
8,230,099 B2 is GRANTED; and,
IPR2014-00711
IPR2015-00338
Patent 8,320,099 B2

4 

ORDERED that judgment is entered herein against Patent Owner with
respect to claims 10–12 of U.S. Patent No. 8,230,099 B2. Claims 10–12 of
U.S. Patent No. 8,230,099 B2 are not patentable, and shall be cancelled.

PETITIONERS:
Andrea Reister
areister@cov.com

Gregory Discher
gdischer@cov.com

Doris Johnson Hines
dori.hines@finnegan.com

Jonathan Stroud
jonathan.stroud@finnegan.com

PATENT OWNER:
Reza Mollaaghababa
mollaaghababar@pepperlaw.com

Thomas Engellenner
engellennert@pepperlaw.com

Christopher Horgan
chris.horgan@concerttechnology.com