IPR2020-00973 (P.T.A.B. Jun. 17, 2021)

Impinj, Inc.

Patent Trials and Appeals BoardJun 17, 2021

IPR2020-00973 (P.T.A.B. Jun. 17, 2021)

Trials@uspto.gov Paper 10 Tel: 571-272-7822 Entered: June 17, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NXP USA, INC., Petitioner, v. IMPINJ, INC., Patent Owner. IPR2020-00973 Patent 8,952,792 B1 Before KEN B. BARRETT, ROBERT J. WEINSCHENK, and KEVIN C. TROCK, Administrative Patent Judges. TROCK, Administrative Patent Judge. JUDGMENT Granting Request for Adverse Judgment after Institution of Trial 37 C.F.R. § 42.73(b) IPR2020-00973 Patent 8,952,792 B1 2 The Petition in this proceeding was filed on May 22, 2020, challenging claims 1 and 8–14 of U.S. Patent No. 8,952,792 B1. Paper 1. Patent Owner did not file a Preliminary Response. We instituted inter partes review as to all challenged claims on the grounds raised in the Petition on November 27, 2020 and issued a Scheduling Order on December 7, 2020. Papers 6, 7. Pursuant to the Scheduling Order, Patent Owner was to file a response to the petition or a motion to amend the patent by February 19, 2021. According to the record in this case, Patent Owner did neither. Additionally, the Scheduling Order instructed Patent Owner to arrange for a conference call with the Board if Patent Owner elected to not file a response to the petition. Patent Owner did not arrange for such a conference call. Before us now is Petitioner’s Reply (Paper 8), requesting that “the panel enter adverse judgment against the Patent Owner.” Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner’s failure to file substantive papers in this proceeding is consistent with abandonment of the contest. Absent cause, we will enter adverse judgment. Accordingly, on May 20, 2021, we ordered Patent Owner to show cause within ten (10) business days why adverse judgment under 37 C.F.R. § 42.73(b) should not be entered against it. Paper 9. As of the date of this Order, Patent Owner has not responded to our order to show cause and the time to do so has expired. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims is appropriate. IPR2020-00973 Patent 8,952,792 B1 3 ORDER In consideration of the foregoing, it is hereby ORDERED that Petitioners’ request for adverse judgment under 37 C.F.R. § 42.73(b) is GRANTED; FURTHER ORDERED that this constitutes a Final Written Decision under 35 U.S.C. § 318(a); and FURTHER ORDERED that claims 1 and 8–14 of U.S. Patent No. 8,952,792 B1 be CANCELLED. IPR2020-00973 Patent 8,952,792 B1 4 For PETITIONER: David Witcoff Matthew Johnson David Cochran Thomas Ritchie Joshua Nightingale Yury Kalish JONES DAY dlwitcoff@jonesday.com mwjohnson@jonesday.com dcochran@jonesday.com twritchie@jonesday.com jrnightingale@jonesday.com ykalish@jonesday.com For PATENT OWNER: Christina McCullough R. Tyler Kendrick Daniel Keese PERKINS COIE LLP Mccullough-ptab@perkinscoie.com Kendrick-ptab@perkinscoie.com Keese-ptab@perkinscoie.com