Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 6____
`Entered: September 11, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`QWIKCASH, LLC,
`Patent Owner.
`____________
`
`IPR2020-00972
`Patent 8,714,445 B1
`
`
`Before JUSTIN T. ARBES, DAVID C. MCKONE, and TERRENCE W.
`MCMILLIN, Administrative Patent Judges.
`
`MCMILLIN, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Request for Extension of Time
`37 C.F.R. § 42.5(c)(2)
`
`

`

`IPR2020-00972
`Patent 8,714,445 B1
`
`
`On September 9, 2020, 1 Patent Owner’s counsel sent an email to the
`Board requesting a thirty-day extension of time to file the preliminary
`response. Ex. 3001. The email stated:
`The undersigned and his firm, Niro McAndrews, LLP,
`was retained today to represent Patent Owner, Qwikcash, LLC
`(“Qwikcash”), in Inter Partes Review IPR2020-00972. The
`delay in our retention was caused directly by the COVID-19
`outbreak.
`Specifically, Qwikcash is a small entity based in Florida
`that is managed solely by Howard Katz, the 79 year-old-
`inventor of the patent at issue in this proceeding, U.S. Patent
`No. 8,714,445 (“the ’445 patent”). During the late June / early
`July 2020 spike in Florida COVID-19 cases, Mr. Katz
`contracted the virus and was unable to arrange for
`representation in the above-captioned proceeding. To date, Mr.
`Katz has not fully recovered from the disease.
`
`Id. In its email, Patent Owner references the USPTO’s June 2020 Update
`Regarding Certain Patent-Related Timing Deadlines under the Coronavirus
`Aid, Relief, and Economic Security Act and Other Relief Available to Patent
`Applicants and Patentees (June 29, 2020), available at
`https://www.uspto.gov/sites/default/files/documents/Patents-Notice-CARES-
`Act-2020-06.pdf (“June 2020 COVID-19 Update”). The June 2020 COVID-
`19 Update provides:
`
`1 The preliminary response was due on September 9, 2020. See Paper 3, 1
`(Notice of Filing Date Accorded to Petition and Time for Filing Patent
`Owner Preliminary Response). Prior to this date, despite repeated efforts by
`Petitioner to contact Patent Owner (see Ex. 3002), Patent Owner had not
`made any filings in this proceeding including failing to submit mandatory
`notice information under 37 C.F.R. § 42.8 within 21 days of service of the
`Petition. Patent Owner’s Mandatory Notices Pursuant to 37 C.F.R. § 42.8(b)
`(Paper 5) was filed on September 9, 2020. Patent Owner’s Power of
`Attorney (Paper 4) indicates that Patent Owner’s counsel was appointed by
`Patent Owner to represent it in this proceeding on September 9, 2020.
`
`2
`
`
`

`

`IPR2020-00972
`Patent 8,714,445 B1
`
`
`The United States Patent and Trademark Office (USPTO)
`recognizes that the COVID-19 pandemic has imposed
`significant hardships on many of our stakeholders. . . . By this
`notice, under the [Coronavirus Aid, Relief, and Economic
`Security] Act authority and its existing authority, the USPTO
`will extend or otherwise begin to direct relief as described
`below. Further, although some relief provided in past notices
`is ending, other extensions of time and other relief remain
`available to those who need it on a case-by-case basis.
`
`
`* * *
`
`(4) PTAB
`
`
`For proceedings before the PTAB, a request for an
`extension of time where the COVID-19 outbreak has prevented
`or interfered with a filing before the PTAB can be made by
`contacting the PTAB . . . by email at Trials@uspto.gov (for
`AIA trials). . .
`
`
`Patent Owner’s request for an extension of time by email was made in
`accordance with the June 2020 COVID-19 Update and, based upon the
`representations in the email, we determine the COVID-19 outbreak has
`prevented or interfered with the filing of Patent Owner’s preliminary
`response. We, therefore, grant the request for an extension of time.
`
`In addition, 37 C.F.R. 42.5(c)(2) provides, “[a] request for an
`extension of time must be supported by a showing of good cause.” Based
`upon the representations in Patent Owner’s email, we determine that good
`cause exists for granting the request for an extension of time.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for an extension of time is
`granted; and
`
`
`
`
`3
`
`

`

`IPR2020-00972
`Patent 8,714,445 B1
`
`
`FURTHER ORDERED that Patent Owner’s preliminary response
`pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107 shall be filed on or
`before October 9, 2020.
`
`
`
`
`
`4
`
`

`

`IPR2020-00972
`Patent 8,714,445 B1
`
`PETITIONER:
`
`Jason Mudd
`Eric Buresh
`
`ERISE IP, P.A.
`jason.mudd@eriseip.com
`eric.buresh@eriseip.com
`
`Ashraf Fawzy
`Alyssa Holtslander
`UNIFIED PATENTS INC.
`afawzy@unifiedpatents.com
`alyssa@unifiedpatents.com
`
`PATENT OWNER:
`
`Brian Lynch
`NIRO MCANDREWS, LLP
`blynch@niro-mcandrews.com
`
`
`
`
`
`
`5
`
`