Mitek Systems, Inc.v.Rothschild Mobile Imaging Innovations, LLC

Patent Trial and Appeal Board

Dec 7, 2015

11051069 (P.T.A.B. Dec. 7, 2015)

Trials@uspto.gov Paper No. 24
571-272-7822 Entered: December 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MITEK SYSTEMS, INC.,
Petitioner,

v.

ROTHSCHILD MOBILE IMAGING INNOVATIONS, LLC,
Patent Owner.
____________

Case IPR2015-00624
Patent 7,456,872 B2
____________

Before JAMESON LEE, DAVID C. MCKONE, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

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

IPR2015-00624
Patent 7,456,872 B2

2

BACKGROUND
On August 6, 2015, the Board instituted inter partes review of claims
27, 28, 38, and 39 of U.S. Patent No. 7,456,872 B2 (“the ’872 patent”).
Paper 7. In a conference call on November 23, 2015, counsel for Patent
Owner Rothschild Mobile Imaging Innovations, LLC, informed the Board
that Patent Owner had decided not to contest the challenge of the claims for
which trial was instituted in this proceeding, and we informed Patent Owner
that it should file a request for adverse judgment. See Paper 21, 2. Counsel
for Petitioner Mitek Systems, Inc., indicated that Petitioner would not
oppose Patent Owner’s filing of such a request. Id. Following the
conference call, Patent Owner on November 30, 2015, filed a Request to
Terminate Proceeding (Paper 22), stating that, “[b]ecause Patent Owner does
not intend to respond to the Petition with respect to the four claims under
review, and it is willing to abandon those claims as a result, Patent Owner
seeks termination of this proceeding.” Paper 22, 2. On December 3, 2015,
Patent Owner supplemented its Request to Terminate by filing a Request for
Adverse Judgment (Paper 23), stating that, “[b]ecause Patent Owner does
not intend to respond to the Petition with respect to the four claims under
review, and it is willing to abandon those claims as a result, Patent Owner
seeks an[] adverse judgment in this proceeding.” Paper 23, 2.

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). Here, in view of Patent
Owner’s explicit request for adverse judgment, entry of judgment adverse to
IPR2015-00624
Patent 7,456,872 B2

3

Patent Owner and cancellation of claims 27, 28, 38, and 39 of the
’872 patent are appropriate. Further, because “[a] judgment . . . disposes of
all issues that were, or by motion reasonably could have been, raised and
decided,” 37 C.F. R. § 42.73(a), we dismiss Patent Owner’s co-pending
Request to Terminate Proceeding as moot.

ORDER
Accordingly, it is
ORDERED that Patent Owner’s Request for Adverse Judgment is
GRANTED;
FURTHER ORDERED that judgment is entered against Patent Owner
with respect to claims 27, 28, 38, and 39 of the ’872 patent;
FURTHER ORDERED that claims 27, 28, 38, and 39 of the
’872 patent are unpatentable, and a certificate canceling those claims shall
issue in due course;
FURTHER ORDERED that Patent Owner’s Request to Terminate
Proceeding is DISMISSED as moot; and
FURTHER ORDERED that this decision and entry of adverse
judgment constitutes a final written decision under 35 U.S.C. § 318(a).

IPR2015-00624
Patent 7,456,872 B2

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FOR PETITIONER:

Naveen Modi
Joseph Palys
Phillip Citroen
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
phillipcitroen@paulhastings.com

FOR PATENT OWNER:

Steven E. Ross
Christopher P. O’Hagan
Kenneth Emanuelson
Matthew P. Harper
ROSS IP GROUP PLLC
sross@rossipg.com
cpohagan@rossipg.com
kemanuelson@rossipg.com
mharper@rossipg.com