Gephart et al

Patent Trials and Appeals Board

Jul 2, 2020

IPR2020-00321 (P.T.A.B. Jul. 2, 2020)

Trials@uspto.gov Paper 4
571-272-7822 Date: July 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS, LLC,
Petitioner,

v.

TRANSACTIONSECURE LLC,
Patent Owner.
____________

IPR2020-00321
Patent 8,738,921 B2
____________

Before THOMAS L. GIANNETTI, CHRISTA P. ZADO, and
NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

JUDGMENT
Granting Request for Adverse Judgment Prior to Institution of Trial
37 C.F.R. § 42.73(b)

On December 31, 2019, Unified Patents, LLC (“Petitioner”) filed a
Petition (Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an
inter partes review of claims 1, 4–8, 10, 15, 17, and 20–23 of U.S. Patent
No. 8,738,921 (“the ’921 Patent”). On January 17, 2020, the Board issued a
IPR2020-00321
Patent 8,738,921 B2

2
Notice of Filing Date, advising the Patent Owner of the requirement to
submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21
days of service of the Petition. Patent Owner did not file the required
mandatory notice by the due date, January 21, 2020.
Accordingly, the Board held a telephone conference with counsel for
the parties on July 1, 2020. Jason Mudd of Erise IP, P.A. appeared on behalf
of Petitioner and R. Burns Israelsen of Maschoff Brennan (Patent Owner’s
counsel of record with the United States Patent and Trademark Office for the
challenged patent) appeared on behalf of Patent Owner. During the
conference, counsel for Patent Owner stated that he is representing Patent
Owner and that Patent Owner has elected not to participate in the proceeding
and agreed to entry of adverse judgment against Patent Owner. Counsel for
Petitioner did not object to entry of adverse judgment.
A party may request judgment against itself at any time during a
proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry
of adverse judgment include “[a]bandonment of the contest.” Id. Counsel
for Patent Owner has stated that Patent Owner has elected not to participate
in this proceeding, and has agreed that the Board should enter adverse
judgment against Patent Owner. Therefore, we determine that Patent Owner
has abandoned the contest and that entry of adverse judgment against Patent
Owner is appropriate. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d
1345 (Fed. Cir. 2018).

IPR2020-00321
Patent 8,738,921 B2

3
Accordingly, it is
ORDERED that adverse judgment is hereby entered against Patent
Owner pursuant to 37 C.F.R. § 42.73(b) with respect to claims 1, 4–8, 10,
15, 17, and 20–23 of U.S. Patent No. 8,738,921; and
FURTHER ORDERED that this proceeding is terminated.

IPR2020-00321
Patent 8,738,921 B2

4

PETITIONER

Jason R. Mudd
Roshan Mansinghani
Eric A. Buresh
Ashraf Fawzy
ERISE IP, P.A.
jason.mudd@eriseip.com
roshan@unifiedpatents.com
eric.buresh@eriseip.com
afawzy@unifiedpatents.com

PATENT OWNER

R. Burns Israelsen
MASCHOFF BRENNAN
bisraelsen@mabr.com