IPR2020-00948 (P.T.A.B. Jan. 27, 2021)

Arsus,LLC

Patent Trials and Appeals BoardJan 27, 2021

IPR2020-00948 (P.T.A.B. Jan. 27, 2021)

Trials@uspto.gov Paper No. 18 571-272-7822 Date: January 27, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD UNIFIED PATENTS INC., Petitioner, v. ARSUS, LLC, Patent Owner. IPR2020-00948 Patent 10,259,494 B2 Before HYUN J. JUNG, RICHARD J. SMITH, and JASON W. MELVIN, Administrative Patent Judges. MELVIN, Administrative Patent Judge. JUDGMENT Granting Request for Adverse Judgment After Institution of Trial 37 C.F.R. § 42.73(b) IPR2020-00948 Patent 10,259,494 B2 2 Unified Patents, Inc., filed a Petition (Paper 1, “Pet.”) requesting institution of inter partes review of claims 1–5, 8–12, 21, and 22 (“the challenged claims”) of U.S. Patent No. 10,259,494 B2 (Ex. 1001, “the ’494 patent”). Arsus, LLC, (“Patent Owner”) filed a Preliminary Response. Paper 6. Pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we instituted review. Paper 15. On December 9, 2020, Patent Owner filed a “Motion to Dismiss.” Paper 17 (“Motion”). In the Motion, Patent Owner includes a copy of a statutory disclaimer pursuant to 37 C.F.R. § 1.321(a), in which Patent Owner disclaimed all interest in the challenged claims. Motion 4–6. Under our rules, a party may request adverse judgment against itself at any time during a proceeding, and we construe a disclaimer of all claims involved in a trial as a request for adverse judgment. 37 C.F.R. § 42.73(b). Because Patent Owner has disclaimed all challenged claims, we construe Patent Owner’s Motion as a Request for Adverse Judgment. Having satisfied the regulatory standard, we grant Patent Owner’s request. Accordingly, it is ORDERED that, pursuant to 37 C.F.R. § 42.73(b), inter partes review of claims 1–5, 8–12, 21, and 22 of the ’494 patent is terminated.1 1 Patent Owner is reminded of the applicable estoppel provisions in 37 C.F.R. § 42.73(d)(3). IPR2020-00948 Patent 10,259,494 B2 3 PETITIONER: David C. Seastrunk Roshan Mansinghani UNIFIED PATENTS, LLC david@unifiedpatents.com roshan@unifiedpatents.com PATENT OWNER: Patrick Bright WAGNER, ANDERSON & BRIGHT PC pbright@brightpatentlaw.com