`571-272-7822
`
`
`
`
`
`
`
`Paper 4
`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
`
`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).
`
`
`2
`
`
`
`IPR2020-00321
`Patent 8,738,921 B2
`
`
`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.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2020-00321
`Patent 8,738,921 B2
`
`
`
`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
`
`
`
`
`
`4
`
`
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