`Tel: 571-272-7822
`
`
`
`
`
`Paper 32
`Date: April 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`v.
`PEBBLE TIDE, LLC,
`Patent Owner.
`
`PGR2020-00011
`Patent 10,303,411 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, DAVID C. MCKONE,
`and CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`MCKONE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Patent Owner’s Request for Adverse Judgment
`37 C.F.R. §§ 42.72, 42.73(b)
`
`
`
`
`
`
`
`
`
`PGR2020-00011
`Patent 10,303,411 B2
`
`Unified Patents (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting post-grant review of claims 1–20 of U.S. Patent No. 10,303,411
`B2 (Ex. 1001, “the ’411 patent”). Pet. 5. We instituted a post-grant review
`of claims 1–20 of the ’411 patent. Paper 12. Prior to our Decision, the
`United States District Court for the District of Delaware ruled that the
`challenged claims are invalid under 35 U.S.C. § 101. Ex. 1030. After our
`Decision, on July 23, 2020, the United States Court of Appeals for the
`Federal Circuit dismissed Patent Owner’s appeal of the Delaware court’s
`decision. Ex. 1032.
`On September 29, 2020, Pebble Tide LLC (“Patent Owner”) filed
`both a Patent Owner Response (Paper 17, “Resp.”) and a Motion to Amend
`(Paper 18, “Mot. to Amend”) seeking to substitute claims 21–35 for claims
`1–3, 5, 6, 8–11, 13, 14, 16–18, and 20. We expunged Patent Owner’s
`Response on November 19, 2020. Paper 21. On December 22, 2020,
`Petitioner filed an Opposition to Patent Owner’s Motion to Amend.
`(Paper 23, “Opp.”). Petitioner argued, inter alia, that Patent Owner’s Motion
`to Amend should be denied as moot in light of the Delaware court’s decision
`on the challenged claims and the subsequent dismissal of the Federal Circuit
`appeal of that decision. Id. at 2–4. Oral Argument is scheduled for April 14,
`2021. Paper 13, 13.
`On April 12, 2021, Patent Owner emailed the Board seeking
`permission to file a motion for adverse judgment under 37 C.F.R. § 42.73(b).
`Ex. 3001. Patent Owner seeks adverse judgment “based on mootness, given
`that this Motion [to Amend] was filed after the Federal Circuit appeal was
`dismissed. As such, the Board need not reach the merits of this Motion.” Id.
`Patent Owner represented that Petitioner does not oppose. Id. Patent Owner
`
`2
`
`
`
`PGR2020-00011
`Patent 10,303,411 B2
`further stated that the parties request that the April 14, 2021, oral argument
`not be held. Id.
`The Board responded, by email, that Patent Owner may request
`judgment against itself at any time during the proceeding, and that the
`parties should jointly request to cancel the April 14, 2021, oral argument.
`Id.
`
`Patent Owner filed a Motion for Adverse Judgment Under 37 C.F.R.
`§ 42.73(b). (Paper 30, “Mot.”). Specifically, “Patent Owner respectfully
`requests judgment against itself as to all challenged claims. Patent Owner
`therefore requests that this proceeding be terminated, given that no case or
`controversy remains.” Id. at 2. Patent Owner cites to Rule 42.73(b)(2),
`which lists, as an action construed as a request for adverse judgment,
`“[c]ancellation or disclaimer of a claim such that the party has no remaining
`claim in the trial.” Id.
`“A party may request judgment against itself at any time during a
`proceeding.” 37 C.F.R. § 42.73(b). “The Board may terminate a trial
`without rendering a final written decision, where appropriate.” 37 C.F.R.
`§ 42.72. Here, Patent Owner requests judgment against itself because a
`district court has already determined that the claims challenged in the
`Petition are invalid and, therefore, there is no case or controversy remaining.
`Mot. 2; Ex. 3001. Both parties agree that Patent Owner’s Motion to Amend
`is moot because the Delaware court and the Federal Circuit ruled on the
`validity of the challenged claims before Patent Owner filed its Motion to
`Amend. Opp. 2; Ex. 3001. In light of Patent Owner’s Motion for Adverse
`Judgment and the parties’ agreement on the Motion to Amend, we grant
`Patent Owner’s Motion for Adverse Judgment, dismiss Patent Owner’s
`Motion to Amend as moot, and terminate the proceeding.
`
`3
`
`
`
`PGR2020-00011
`Patent 10,303,411 B2
`The parties also filed a Joint Request to Cancel April 14, 2001 Oral
`Argument. Paper 31. Because the case is terminated, and no party currently
`seeks oral argument, the April 14, 2021, oral argument is unnecessary and is
`cancelled.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Adverse Judgment is
`granted;
`FURTHER ORDERED that Patent Owner’s Motion to Amend is
`dismissed as moot;
`FURTHER ORDERED that the oral argument scheduled for April 14,
`2021, is cancelled; and
`FURTHER ORDERED that this proceeding is terminated.
`
`
`
`
`4
`
`
`
`PGR2020-00011
`Patent 10,303,411 B2
`
`
`For PETITIONER:
`
`Jung Hahm
`Roshan Mansinghani
`UNIFIED PATENTS, LLC
`jung@unifiedpatents.com
`roshan@unifiedpatents.com
`
`
`For PATENT OWNER:
`
`Isaac Rabicoff
`RABICOFF LAW LLC
`isaac@rabilaw.com
`
`5
`
`
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